Sony Interactive Entertainment LLC

Patent Trials and Appeals Board

Aug 17, 2021

2020003031 (P.T.A.B. Aug. 17, 2021)

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. 15/496,254 04/25/2017 Davender Agnihotri SCEA16038US02 9875 156216 7590 08/17/2021 Sony Interactive Entertainment c/o Mayer & Williams PC 55 Madison Avenue Suite 400 Morristown, NJ 07960 EXAMINER RIAZ, SAHAR AQIL ART UNIT PAPER NUMBER 2424 NOTIFICATION DATE DELIVERY MODE 08/17/2021 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): SCEAPatentDocket@playstation.sony.com docket@mwpatentlaw.com mwolf@mwpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVENDER AGNIHOTRI, LING JUN WONG, and TRUE XIONG Appeal 2020-003031 Application 15/496,254 Technology Center 2400 Before JEAN R. HOMERE, CAROLYN D. THOMAS, and BRADLEY W. BAUMEISTER, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge HOMERE. Opinion Dissenting filed by Administrative Patent Judge BAUMEISTER. HOMERE, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-25, which constitute all of the claims 1 We refer to the Specification, filed Apr. 25, 2017 (“Spec.”); Final Office Action, mailed April 26, 2019 (“Final Act.”); Appeal Brief, filed Sept. 18, 2019 (“Appeal Br.”); Examiner’s Answer, mailed Jan. 17, 2020 (“Ans.”), and Reply Brief, filed Mar. 16, 2020 (“Reply Br.”). 2 “Appellant” refers to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Sony Interactive Entertainment LLC. Appeal Br. 2. Appeal 2020-003031 Application 15/496,254 2 pending. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. II. CLAIMED SUBJECT MATTER According to Appellant, the claimed subject matter relates to a method and system for using second display (14) to register with server (18) content playback device (12) via local network (16) during a session associated with a user account. Spec. ¶¶ 3, 33. Figure 1, reproduced below, is useful for understanding the claimed subject matter: Figure 1 illustrates system (10) including second display (14), which upon receiving registration information from content playback device (12) during Appeal 2020-003031 Application 15/496,254 3 a user session with server (18), sends the registration information to server (18) and requests playback device (12) to transmit associated authentication credentials to server (18) to complete the registration with the user account. Id. ¶¶ 33, 62, 63. Independent claim 1 is illustrative of the claimed subject matter: 1. A method of registering a content playback device using a second display, comprising: i. establishing a session between a second display and a first server, the session associated with a user account; ii. receiving at the second display registration information about a content playback device; iii. sending from the second display the registration information to the first server; and iv. sending from the second display a signal to the content playback device to request transmission of an authentication credential associated with the content playback device to the first server, wherein the content playback device becomes registered with the user account. Appeal Br. 12 (Claims App.) (emphasis added). III. REFERENCES The Examiner relies upon the following references as evidence.3 Name Reference Date Holzman US 2005/0239447 A1 Oct. 27, 2005 Hamasaka US 2009/0003798 A1 Jan. 1, 2009 Larsson US 2009/0064346 A1 Mar. 5, 2009 Kim US 2010/00069158 A1 Mar. 18, 2010 Channakeshava US 8,225,383 B1 July 17, 2012 Agnihotri US 9,633,656 B2 Apr. 25, 2017 3 All reference citations are to the first named inventor only. Appeal 2020-003031 Application 15/496,254 4 IV. REJECTIONS4 The Examiner rejects claims 1-25 as follows: Claims 1-4, 6, 9-11, 13-15, 19-21, and 23-25 stand rejected under 35 U.S.C. § 103 as unpatentable over the combined teachings of Larsson and Kim. Final Act. 3-7. Claim 5, 8, 12, and 22 stand rejected under 35 U.S.C. § 103 as unpatentable over the combined teachings Larsson, Kim, and Channakeshava. Final Act. 7-8. Claim 7 stands rejected under 35 U.S.C. § 103 as unpatentable over the combined teachings of Larsson, Kim, and Hamasaka. Final Act. 8-9. Claims 16 and 18 stand rejected under 35 U.S.C. § 103 as unpatentable over the combined teachings of Larsson, Kim, and Holzman. Final Act. 9-10. Claim 17 stands rejected under 35 U.S.C. § 103 as unpatentable over the combined teachings of Larsson, Kim, Hamasaka, Holzman, and Channakeshava. Final Act. 10. 4 The Examiner previously rejected claims 1-25 on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-24 of Agnihotri and Kim. Final Act. 12-18. However, upon Appellant’s filing of a terminal disclaimer on September 18, 2019, the Examiner omitted the rejection in the subsequently mailed Answer. Although the Examiner did not affirmatively withdraw the rejection, in light of the terminal disclaimer, we treat the Examiner’s omission of the rejection in the Answer as a withdrawal thereof. Consequently, we do not address the double patenting rejection in this Decision. Appeal 2020-003031 Application 15/496,254 5 V. ANALYSIS We consider Appellant’s arguments seriatim, as they are presented in the Appeal Brief, pages 6-11 and the Reply Brief, pages 2-3.5 We are unpersuaded by Appellant’s contentions. Appellant argues that the Examiner erred in concluding that the combination of Larsson and Kim teaches or suggests “sending from the second display a signal to the content playback device to request transmission of an authentication credential associated with the content playback device to the first server”, as recited in independent claim 1. Appeal Br. 6. In particular, Appellant argues that Kim does not cure the admitted deficiencies of Larsson because Kim relates to a system wherein a gamer uses a mobile phone to interact with a game console to display information on a common screen. Id. at 7 (citing Kim ¶¶ 9, 10, 15- 18). More particularly, Appellant argues that Kim’s disclosure of the game console transmitting mobile phone information including web ID information and authentication information to a game provision server (GPS) does not teach an authentication credential associated with the game console (content playback device). Id. at 7-8 (citing Kim ¶¶ 16-18.) According to Appellant, because gamer authentication information has nothing to do with authentication of the content playback device, the Examiner’s reliance upon Kim is in error. Id. at 10, Reply Br. 2. Appellant’s arguments are not persuasive of reversible Examiner error. As a preliminary matter, we note that Appellant’s arguments regarding 5 We have considered in this Decision only those arguments Appellant actually raised in the Briefs. Arguments not made are forfeited. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Appeal 2020-003031 Application 15/496,254 6 the rejection of claim 1 do not dispute any of the Examiner’s findings with regard to Larsson. They primarily focus on whether the Examiner properly relies upon Kim’s disclosure of a game console sending to a server an authentication credential associated with a gamer to teach or suggest sending an authentication credential associated with the game console.6 We further note that because the disputed limitations merely recite a request that the playback device send an authentication credential associated with the content playback device to the server to register the playback device with the user account, there is no positively recited step whereby the authentication credential is actually sent from the content playback device to the first server, and, in any case, the authentication credential need not be that of the playback device. 6 We note in passing that this purported distinction between the type of data (data associated with console vs. data associated with user/gamer) relates to non-functional descriptive material, which refers to data content that does not exhibit a functional interrelationship with the substrate and does not affect the way the computing processes are performed. See MPEP § 2106.01. In a precedential decision, an expanded Board panel held that elements that do not affect the claimed process are non-functional material and are merely descriptive. See Ex parte Nehls, 88 USPQ2d 1883, 1887 (BPAI 2008) (precedential). The content of nonfunctional descriptive material is not entitled to weight in the patentability analysis. See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative), aff’d, No. 06- 1003 (Fed. Cir. June 12, 2006) (Rule 36) (“wellness-related” data in databases and communicated on distributed network did not functionally change either the data storage system or the communication system used in the claimed method). “[N]onfunctional descriptive material cannot lend patentability to an invention that would have otherwise been anticipated by the prior art.” Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), aff'd, 191 Fed. Appx. 959 (Fed. Cir. 2006) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)). Appeal 2020-003031 Application 15/496,254 7 Even if claim 1 required that the content playback device send an authentication credential to the first server, under the broadest reasonable interpretation,7 it suffices that Kim teaches or suggests a playback device that sends to the server authentication credential that pertains to, relates to or is otherwise associated with the playback device. Also, claim 1 fails to explain how the content playback device becomes registered with the user account, i.e., does it becomes registered merely by the second display sending the request or by some other means? Kim discloses a game system enabling a plurality of gamers to utilize their own portable devices to control an identified multi-user game console such that different groups of gamers associated with a different console are registered at a game provision server (GPS) to synchronously and simultaneously play a video game online. Abstract, Fig. 1. In particular, Kim discloses that upon receiving from the gamers and associated game consoles (1) game execution key signals, (2) game participant information (3) gamer authentication, and (4) game participation setup signal of each gamer, the GPS registers the gamers along with their associated game console. Kim ¶¶ 9, 10, 15-17, Fig. 1. More particularly Kim states, “[p]referably, the multi-user game console includes: a user game console for transmitting gamer authentication information and a game participation setup signal of 7 During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); see also In re Smith Int'l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017) (noting that such interpretation is one “that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification’”). Appeal 2020-003031 Application 15/496,254 8 each gamer to the game provision server (GPS), receiving game images, advertising images, and audio data from the game.” Kim ¶10. Because claim 1 does not recite the content playback device sending any authentication credentials to the first server, only receiving a request to do so, and because we agree with the Examiner that Kim’s disclosure teaches or at least suggests sending an authentication credential that relates to, pertains to, or is otherwise associated with the console consistent with our claim interpretation above, we agree with the Examiner that the cited prior art teaches or at least suggests the disputed limitations. Id. Because Appellant has not demonstrated that the Examiner’s proffered combination would have been “uniquely challenging or difficult for one of ordinary skill in the art,” we agree with the Examiner that the proposed modification would have been within the purview of the ordinarily skilled artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Id. Consequently, we are satisfied that, on this record, the Examiner has established that the combination of Larsson and Kim teaches or suggests the disputed claim limitations. Because we are not persuaded of Examiner error, we sustain the Examiner’s rejection of claim 1 as unpatentable over the combination of Larsson and Kim. Regarding the rejections of claims 2-25, because Appellant does not present separate patentability arguments or reiterates substantially the same arguments as those previously discussed for the patentability of claim 1 above, claims 2-25 fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv). VI. CONCLUSION We affirm the Examiner’s rejections of claims 1-25. Appeal 2020-003031 Application 15/496,254 9 VII. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 6, 9-11, 13-15, 19- 21, 23-25 103 Larsson, Kim 1-4, 6, 9- 11, 13- 15, 19- 21, 23-25 5, 8, 12, 22 103 Larsson, Kim, Channakeshava 5, 8, 12, 22 7 103 Larsson, Kim, Hamasaka 7 16, 18 103 Larsson, Kim, Holzman 16, 18 17 103 Larsson, Kim, Hamasaka, Holzman, Channakeshava 17 Overall Outcome 1-25 VIII. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 1 BAUMEISTER, Administrative Patent Judge, dissenting. As a threshold matter, I question whether Larrson actually teaches what the Examiner states that it teaches. More specifically, the Examiner finds that Larrson teaches the first three limitations of independent claim 1, including the third limitation, “sending from the second display the registration information to the first server.” Final Act. 4 (“Mobile phone 152 may generate credentials that may allow hotel TV 154 to be authenticated by proxy server 104.”) (citing Larrson ¶ 74; Fig. 6). But Larrson teaches that the mobile phone 152 (or “second display”) sends the credentials to the hotel TV 154 (or “content playback device”)-not to a server. Larrson ¶¶ 74-75. But regardless of whether the Examiner’s findings regarding Larrson are accurate, Appellant does not argue this point, so the argument is waived. See Appeal Br. 6-11 (wherein Appellant only presents arguments relating to Kim); see also Hyatt v. Dudas, 551, F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of rejection as waived). Turning to the arguments that Appellant does present, I agree with Appellant that the Examiner interprets the claim language “authentication credential associated with the content playback device,” as recited in the fourth limitation of claim 1, in an unreasonably broad manner. As Appellant argues, [T]he [claimed] content playback device transmits second display information including authentication information to a server. However, such is clearly different from sending a signal from the second display to the content playback device to request Appeal 2020-003031 Application 15/496,254 2 transmission of an authentication credential (associated with the content playback device) from the same to the server. Appeal Br. 8. Appellant’s entire invention is directed towards a convenient technique for users to “register and manage their IPTV device directly from a second display device [, such as from a mobile phone,] instead of going to a separate registration website.” Spec., Abstr. That is, Appellant’s Specification explains that in the claimed invention, the mobile phone is a tool for registering the television-not that the television is a conduit for registering users’ mobile phones. See, e.g. Spec. ¶ 12 (“The proxy server presents an authentication credential of the content playback device to the content server.”); id. ¶ 35 (“In many cases, an authentication credential of the content playback device will also be logged with the user account and/or with a service provider, this credential often required for access to services and content items.”); id. ¶ 56 (“At state 100, the content playback device 12, using its authentication credentials, sends the playlist id or reference identifier to the proxy server 22, which returns the required playlist data in state 102.”); id. ¶ 63 (As noted above, the authentication credential [of the content playback device] is needed to browse certain service providers.”). Moreover, claim 1, itself, indicates that the language “authentication credential associated with the content playback device” (emphasis added) refers to a credential of the playback device, itself, and is distinguishable from a credential that authenticates a user using a mobile phone, as taught by Kim. Specifically, the preamble of claim 1 recites, “A method of registering a content playback device using a second display.” Moreover, the fourth limitation of claim 1 additionally requires that the sending of the authentication credential associated with the content playback device causes Appeal 2020-003031 Application 15/496,254 3 “the content playback device [to become] registered with the user account.” The Examiner does not explain how Kim’s protocol of using the playback device as a conduit for mobile-phone users to register their gaming accounts reasonably teaches registering the content playback device, itself, as expressly required by claim 1. The Majority additionally finds that the content of the signal being sent in the fourth limitation of claim 1 constitutes non-functional descriptive material because the data content of the signal “does not exhibit a functional interrelationship with the substrate and does not affect the way the computing processes are performed.” Majority Opinion 5-6, n.6. I question whether this assessment is accurate in light of the fact that the limitation further requires that as a result of the sending of the signal, “the content playback device becomes registered with the user account.” The Majority may be correct that the claim’s final wherein clause merely constitutes the intended purpose of sending the signal. But the Examiner never advanced this theory, and Appellant never had an opportunity to argue whether the wherein clause produces any further structural changes. But even assuming arguendo that the content of the signal in the fourth limitation constitutes non-functional descriptive material, the Examiner still has provided insufficient explanation for why Larrson and Kim are being combined. The Examiner determines that it would have been obvious to combine the teachings of Larsson and Kim “to provide the user a better way of controlling the device.” Final Act. 4 (citing Kim ¶ 1). But Larrson entails using a mobile phone’s authentication credentials associated with a recognized mobile phone to grant a guest display device access to content stored in the personal network associated with the mobile device. Appeal 2020-003031 Application 15/496,254 4 Larrson Abstr. Whereas, Kim entails using a television that is already in communication with a server to register users of mobile phones. Kim Abstr. The Examiner’s rejection appears to be the product of improperly using Appellant’s claims as a roadmap for establishing a hindsight rationale for combining the references. “[A] rejection cannot be predicated on the mere identification . . . of individual components of claimed limitations. Rather particular findings must be made as to the reason the skilled artisan, with no knowledge of the claimed invention, would have selected these components for combination in the manner claimed.” Ecolochem, Inc. v. Southern Calif. Edison Co., 227 F.3d 1361, 1375 (Fed. Cir. 2000) (citation omitted) (alteration in original). For these reasons, I would reverse the rejections.