Ex Parte Burgess et al

Patent Trial and Appeal BoardJun 27, 2016

13053548 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/053,548 03/22/2011 John Townsend BURGESS III 113648 7590 06/29/2016 Patent Portfolio Builders, PLLC P.O. Box 7999 Fredericksburg, VA 22404-7999 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. 0320-138 8431 EXAMINER JOSHI, SURAJ M ART UNIT PAPER NUMBER 2447 NOTIFICATION DATE DELIVERY MODE 06/29/2016 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): Mailroom@ppblaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN TOWNSEND BURGESS III, NEEL GOYAL, and FRANK A. HUNLETH Appeal2014-005214 Application 13/053,548 1 Technology Center 2400 Before ELENI MANTIS MERCADER, JEFFREY A. STEPHENS, and JOHN D. HAMANN, Administrative Patent Judges. HAMANN, Administrative Patent Judge. DECISION ON APPEAL Appellants file this appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. THE CLAIMED INVENTION Appellants' claimed invention relates to selectively remapping inputs to a TV Internet Browser to enable proper operation of the browser. 1 According to Appellants, the real party in interest is Hillcrest Laboratories Inc. App. Br. 2. Appeal2014-005214 Application 13/053,548 Abstract. Claim 1 is illustrative of the subject matter of the appeal and is reproduced below. 1. A system comprising: a television; a TV Internet browser using said television to display web pages from said Internet; a processor associated with said television and configured to receive inputs for controlling said TV Internet browser; wherein when said processor receives a button press input associated with a predetermined command, said processor determines whether a currently viewed web page on said TV Internet browser is running a predetermined plug-in in a predetermined mode and, if so, remapping said button press input from said predetermined command to another command which is intended to terminate said predetermined plug-in and sending said another command to said TV Internet browser, otherwise, if not, sending said predetermined command to said TV Internet browser. REJECTIONS ON APPEAL (1) The Examiner rejected claims 1--4, 6-10, 12-16, and 18-20 under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Nadalin (US 2007/0262952 Al; publ. Nov. 15, 2007), Liberty et al. (US 7,239,301; iss. July 3, 2007) (hereinafter "Liberty"), and LeBlanc et al. (US 2003/0189589 Al; publ. Oct. 9, 2003) (hereinafter "LeBlanc"), collectively referred to herein as "the combination." (2) The Examiner rejected claims 5, 11, and 17 under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination ofNadalin, Liberty, LeBlanc, and Brewer et al. (US 2009/0307602 Al; publ. Dec. 10, 2009) (hereinafter "Brewer"). 2 Appeal2014-005214 Application 13/053,548 ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' contentions that the Examiner erred. In reaching our decision, we consider all evidence presented and all arguments made by Appellants. We disagree with Appellants' arguments, and we incorporate herein and adopt as our own the findings, conclusions, and reasons set forth by the Examiner in (1) the May 20, 2013 Final Office Action (Final Act. 2-12), (2) the August 1, 2013 Advisory Action (Adv. Act. 2), and (3) the January 17, 2014 Examiner's Answer (Ans. 2-15). We highlight and address, however, specific findings and arguments below for emphasis. (1) Determining whether a predetermined plug-in is running Appellants argue each ofreferences-Nadalin, Liberty, and LeBlanc - in the combination fails to teach or suggest "determin[ing] whether a currently viewed web page on [a] TV Internet browser is running a predetermined plug-in," as recited in claim 1 and similarly recited in claims 9 and 15. See App. Br. 8-10. As to Nadalin, Appellants argue it merely teaches that "a media player [can] chang[ e] the button configuration for a mouse based on an operating mode of [the] media player." App. Br. 9 (citing Nadalin i-fi-f 15, 29; Fig. 6); Reply Br. 2. As to Liberty, Appellants argue although it teaches having "a TV Internet browser using a television to display a web page from the Internet[,] ... it say[ s] nothing about a determination being made whether a webpage on a TV browser is running a predetermined plug-in." App. Br. 9 (citing Liberty 2:49-54; 3:25-55; Fig. 3); Reply 2. As to LeBlanc, Appellants argue it "makes no mention whatsoever of a TV Internet browser," and instead teaches "streaming 3 Appeal2014-005214 Application 13/053,548 content to a user's 'portable access device' such as a table PC." App. Br. 10 (citing LeBlanc i-fi-15, 62, 82); Reply Br. 2-3. The Examiner finds the combination teaches or suggests the disputed limitation. Ans. 11. As to Nadal, the Examiner finds it teaches "remapping of input device commands dependent upon a change in the operating mode, and ... [thus] must determine whether it is running in a predetermined mode (whether or not the media play application is running)." See id. (citing Nadalin i-f 15, Fig. 6). As to Liberty, the Examiner finds it teaches a TV Internet browser system upon which a media application can be implemented. Ans. 12 (quoting Liberty 2 :49-54 ("This trend is likely to continue, potentially with an end result that most if not all of the communication devices currently found in the household will be packaged together as an integrated unit, e.g., a television/VCR/DVD/internet access/radio/stereo unit.")). As to LeBlanc, the Examiner finds it teaches an internet browser can be used to stream multimedia content, including video, "which is well known in the prior art to use specialized software such as various plug-ins (essentially media play applications) to stream the media content." See id. (citing LeBlanc i-fi-162, 82). The Examiner concludes that one of ordinary skill in the art would find the disputed limitation obvious in light of the combined teachings of the references. Ans. 12. We are not apprised of any error in the Examiner's finding that the combination teaches or suggests this disputed limitation. See Nadalin i-f 15, Fig. 6; Liberty 2:49-54; LeBlanc i-fi-162, 82. Appellants incorrectly focus on the references individually. The combination, and its combined teachings, must be considered as a whole, rather than attacking individual references in isolation. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) 4 Appeal2014-005214 Application 13/053,548 (finding each reference "must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole"); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (finding the relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of the references). (2) Remapping said button press input Appellants argue the combination, and Nadalin in particular, fails to teach or suggest "if so, remapping said button press input from said predetermined command to another command which is intended to terminate said predetermined plug-in and sending said another command to said TV internet browser," as recited in claim 1 and similarly recited in claims 9 and 15. See App. Br. 11-12; Reply Br. 3. According to Appellants, although Nadalin teaches that a media player can include a close application function, Nadalin fails to teach "'remapping a button press input from a predetermined command' (e.g., a back button) 'to another command which is intended to terminate said predetermined plug-in and sending said another command to said TV internet browser.[']" App. Br. 12. Appellants also argue with respect to Nadalin's teachings that (i) the "media application cannot correspond [at] the same time to both the TV Internet browser and to the plug-in" and (ii) "there is no TV Internet browser running the media player." Reply Br. 4. As to LeBlanc, Appellants also assert "the 'back' command ... refers to replay and NOT to returning to a previous page." See id. The Examiner finds the combination teaches the disputed limitation. See Ans. 13. The Examiner finds Nadalin teaches a media player having functions, such as a close application function 432, which can be mapped to standard mouse messages (e.g., roller ball click, left button click) so that 5 Appeal2014-005214 Application 13/053,548 when a user issues a re-mapped command (e.g., left button click) on a user device (e.g., a four button mouse) the re-mapped media player function occurs (e.g., close application). See id. (citing Nadalin i-f 29). The Examiner additionally finds LeBlanc also teaches having a "Back" function that terminates a display of a full-screen video feed and returns to a previous video, low resolution display screen. See id. (citing LeBlanc i-f 82). We agree with the Examiner that the combination teaches or suggests the disputed limitation. For example, we agree that the teachings ofNadalin and LeBlanc teach remapping a button press input (e.g., a mouse button click) from its standard command to another command that is intended to terminate the media player application (i.e., the predetermined plug-in) and sending the close application command to the TV internet browser. See Nadalin i-fi-115, 29 (teaching standard pointing devices can support remapping the close application function for the media player application), Fig. 6; Adv. Act. 2; see also supra (finding the combination teaches a media player application can comprise a TV internet browser with a plug-in). We also disagree with Appellants' arguments that the media player application cannot refer to both the TV Internet browser and the plug-in, as well as that there is no TV Internet browser running the media player. Appellants' arguments fail to reflect it is the combined teachings of the references - including Liberty's teaching of a TV internet browser and LeBlanc's teaching of an internet browser with a plug-in for streaming multimedia content - that is the relevant inquiry for obviousness. See supra; Liberty 2:49-54; LeBlanc i-fi-162, 82; Keller, 642 F.2d at 425. 6 Appeal2014-005214 Application 13/053,548 (3) Whether the references are properly combined Appellants argue that the Examiner did not provide sufficient reasoning for combining the references. App. Br. 12-13 (citing Final Act. 7 (arguing "in order to simplify user controls" is insufficient)). Appellants further argue "the references teach away from being combined." App. Br. 13. Specifically, Appellants argue Nadalin "teaches remapping of conventional mouse buttons to work with a media player in a conventional computer environment while Liberty is concerned with innovative 3D pointing devices being used with browsers in less conventional environments." See id. The Examiner finds that the references are properly combined. See Final Act. 7-8. Specifically, the Examiner finds it would have been obvious to one having ordinary skill in the art to combine the teachings (i) ofNadalin and Liberty to simplify user controls and (ii) ofNadalin, Liberty, and LeBlanc to better control and view video content. Final Act. 7-8. We find Appellants' arguments unpersuasive and find the Examiner provides "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). The Examiner reasons a person of ordinary skill in the art would have been motivated to combine the references to simplify user controls and to better control and view video content. See Final Act. 7-8; KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill."). We also find Nadalin does not teach away from making the combination. Teaching 7 Appeal2014-005214 Application 13/053,548 away requires a reference to actually criticize, discredit, or otherwise discourage investigation into the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We find Nadalin does not do so. See Nadalin i-fi-f 15, 29. (4) Processor within an input device Appellants argue the combination, and Liberty in particular, fails to teach or suggest that the "processor is disposed within an input device," as recited in claim 2. App. Br. 13-14. Specifically, Appellants argue Liberty fails to teach that "it is the processor associated with the television that determines whether a currently viewed web page on said TV Internet browser is running a predetermined plug-in in a predetermined mode that is disposed within an input device." App. Br. 14. According to Appellants, although Liberty teaches having a processor within an input device, Liberty fails to teach that this processor "' determin[ es] whether a currently viewed web page on said TV Internet browser is running a predetermined plug-in in a predetermined mode.'" See id. (citing Liberty Fig. 7). The Examiner finds the combination, and Liberty in particular, teaches a processor within an input device, which can process the mapping of movements and inputs of the input device. See Ans. 14 (citing Liberty col. 4, 11. 37-50; Fig. 7). The Examiner further finds these teachings from Liberty, when combined with the teachings ofNadalin and LeBlanc, teach or suggest that the processor could perform Nadalin and LeBlanc's teachings, rendering obvious the disputed limitation. We agree with the Examiner that the combination teaches or suggests the disputed limitation. We also agree that one of ordinary skill in the art would have found it obvious that the processor could be used to perform all 8 Appeal2014-005214 Application 13/053,548 of the processing for the system. See Liberty (Fig. 7 (teaching a processor)); KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("If a person of ordinary skill can implement a predictable variation, Â§ 103 likely bars its patentability."); see also id. at 421 ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."). In addition, we are not persuaded that combining Nadalin, Liberty, and LeBlanc in the manner proffered by the Examiner is "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). (5) Back command Appellants argue the combination, and LeBlanc in particular, fails to teach or suggest that the "predetermined command is a back command which is intended to return said TV Internet browser to a previously viewed web page," as recited in claim 4. App. Br. 14--15. Appellants argue claim 4 depends from claim 2, which depends from claim 1, and thus, it is the processor associated with the television and within the input device that (i) determines whether a currently viewed web page on the TV internet browser is running a predetermined plug-in in a predetermined mode and (ii) remaps a button press input from a back command. See App. Br. 15. Appellants also argue LeBlanc fails to teach a TV internet browser. Id. The Examiner finds the combination teaches the disputed limitation. See Ans. 14. The Examiner finds LeBlanc teaches remapping the "Back" command, which normally returns the browser to the previous web page, in accordance with the disputed limitation. See id. (citing LeBlanc i-f 82). The Examiner further finds LeBlanc's teachings combined with Nadalin and Liberty teach or suggest the disputed limitation, including a processor within 9 Appeal2014-005214 Application 13/053,548 the input device that, inter alia, determines whether a viewed web page on the TV internet browser is running a predetermined plug-in in a predetermined mode and remaps the back command. See id. We agree with the Examiner that the combination teaches or suggests the disputed limitation, including based on our above findings. Appellants' arguments fail to reflect that it is the combined teachings of the references -including Nadalin's remapping of input device buttons, Liberty's TV internet browser, and LeBlanc's internet browser with a plug-in for streaming multimedia content - that is the relevant inquiry for obviousness. See supra; Nadalin i-fi-115, 29; Liberty 2:49-54; LeBlanc i1i162, 82; see also Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425. (6) FLASH or SIL VERLIGHT plug-ins Appellants argue the combination ofNadalin, Liberty, LeBlanc, and Brewer fails to teach or suggest determining "whether a web page on a TV Internet browser is running FLASH or SILVERLIGHT," in accordance with claim 5, and claim 1 from which it depends. App. Br. 16. Specifically, Appellants contend "[ n Jo citation is offered to any of the four references for the determination being made with respect to a FLASH or SIL VERLIGHT plug-in." See id. The Examiner finds Brewer teaches using the Silverlight or Flash for plug-ins for delivering media content. Ans. 15 (citing Brewer i-f 15). The Examiner also finds, in accordance with the above findings, "N adalin, Liberty[,] and LeBlanc teach the elements of Claim 1." Id. The Examiner, thus, finds the combination, when combined with the additional features taught in Brewer, teaches or suggests the disputed limitation "as it would be 10 Appeal2014-005214 Application 13/053,548 obvious that a video plug-in used in an internet browser, (which could be implemented on a TV) could be Flash or Silverlight." Id. We agree with the Examiner that the combination teaches or suggests the disputed limitation, including based on our above findings. Appellants' arguments again fail to reflect that it is the combined teachings of the references -including N adalin' s remapping of input device buttons, Liberty's TV internet browser, LeBlanc's internet browser with a plug-in for streaming multimedia content, and Brewer's Flash and Silverlight media plug-ins -that is the relevant inquiry for obviousness. See supra; Nadalin i-fi-115, 29; Liberty 2:49-54; LeBlanc i1i162, 82; Brewer i-f 15; see also Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425. CONCLUSION Based on our findings above, we sustain the Examiner's rejection of claims 1, 2, 4, and 5. We also sustain the Examiner's rejection of claims 3 and 6-20 for which Appellants did not provide separate arguments for patentability. 11 Appeal2014-005214 Application 13/053,548 DECISION2 We affirm the Examiner's rejections of claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 2 In the event of further prosecution, we suggest that the Examiner consider whether at least one of the conditional steps of method claim 9 need not be performed under the broadest reasonable interpretation of the claim. 12