Ex Parte Candelore

Patent Trial and Appeal Board

Dec 26, 2017

14281158 (P.T.A.B. Dec. 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.
14/281,158 05/19/2014 Brant CANDELORE 201305121.01 5336
36738 7590 12/28/2017
ROrTTT7 fr ASSOPTATRS
EXAMINER
4420 Hotel Circle Court TSVEY, GENNADIY
SUITE 230
SAN DIEGO, CA 92108 ART UNIT PAPER NUMBER
2648
NOTIFICATION DATE DELIVERY MODE
12/28/2017 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRANT CANDELORE
Appeal 2017-001064
Application 14/281,158
Technology Center 2600
Before THU A. DANG, JOHN A. EVANS, and
JOHN D. HAMANN, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 9—20. Claims 1—8 are withdrawn from consideration (Final Rej.
4). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
A. INVENTION
According to Appellant, the invention relates to “determining that a
candidate companion display device is in the same room as a primary
display using low energy Bluetooth” (Spec. 1,11. 6—7).
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Application 14/281,158
B. ILLUSTRATIVE CLAIM
Claim 9 is exemplary:
9. A method comprising:
receiving from a display apparatus a radiofrequency (RF) signal
transmitted with a transmission power of no more than ten
milliwatts and having a frequency of between one and three
gigahertz, inclusive; and
responsive to receiving the RF signal at a device, presenting a
user interface (UI)on a display enabling a user of the device to
cause the display apparatus to present ancillary content related
to primary content which the device is configured to display.
C. REJECTIONS
1. Claims 9—11, 13, 14, 16—18, and 20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Des Jardins (US
2013/0110900 Al, published May 2, 2013), and Krochmal (US
2014/0362728 Al, published Dec. 11, 2014).
2. Claims 12 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Des Jardins, Krochmal, Kim (US 2007/0192813
Al; published Aug. 16, 2007), and Wengrovitz (US 2012/0095779 Al,
published Apr. 19, 2012).
3. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Des Jardins, Krochmal, and Noda (US 2010/0093286 Al,
published Apr. 15, 2010)
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II. ISSUES
The main issues before us are whether the Examiner erred in finding
the combination of Des Jardins and Krochmal teaches or suggests “receiving
from a display apparatus a radiofrequency (RF) signal” transmitted with “a
transmission power of no more than ten milliwatts and having a frequency
of between one and three gighertz” (i.e., a low energy signal), and
“responsive to receiving the RF signal, presenting a user interface (UI) on a
display, enabling a user of the device to cause the display apparatus to
present ancillary content related to primary content” (claim 9).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Des Jardins
1. Des Jardins discloses a method for controlling and consuming content,
which provides for rendering first content on a first device and rendering
second content on a second device in response to a signal from the first
device (Abst.). In Des Jardins, first content rendered on a first device
comprising a content control element is selected or activated, causing a
synchronization signal to be transmitted from a first device (| 62). The
synchronization signal is then received by a second device (1 63), and the
second device processes the synchronization signal to control second content
presented by the second device, wherein the synchronization signal relates to
the rendering of the first content (| 64). The first content is then rendered or
modified to relate to the second content provided by the second device, for
example, the first content is updated or changed to have contextual
relationship to the second content provided by the second device (1 65). In
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an embodiment, the first device is a main display device and the second
device is a combination display device and remote control for controlling the
first device (1 66).
Krochmal
2. Krochmal discloses wireless communication devices for discovering
each other and sharing information (Abst.). In Krochmal, Bluetooth Low
Energy (BTLE) messages are received by a first wireless communication
device which include information to identity a second wireless
communication device in order to determine whether to establish a
connection and/or a data sharing service (127). The wireless
communication devices are also connected to display devices, supplemental
input/output devices, and the like (128). The wireless communication
devices broadcast wireless communication service capabilities to each other
using BTLE messages according to a BTLE wireless communication
protocol (130).
IV. ANALYSIS
35 U.S.C. § 103(a)
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments that
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant contends “Des Jardins does not teach the low energy signal
at all” and “the RUSM of Krochmal nowhere envisions the use of its low
energy signal to precipitate the action required in Claim 1” (App. Br. 4).
Although Appellant concedes Krochmal uses a “low energy signal” similar
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to the claimed invention, Appellant contends “Krochmal appears to use a
low energy signal for device-to-device discovery to ensure that file sharing
will occur between two devices from the same manufacturer” {id. (citations
omitted)). Thus, Appellant contends “the rejection proposes to use the low
energy signal in the RUSM of Krochmal for a function that is not envisioned
by either reference to satisfy a purpose that is not implicated by Des Jardins”
{id. 5).
Appellant contests the Examiner’s rationale for combining the
references because “Des Jardins relies on the central server for coordination
and thus has no need for the two devices to discover each other” {id.). To
combine the references as set forth in Appellant’s Disclosure would be
“impermissible hindsight” {id. 8).
We have considered all of Appellant’s arguments and evidence
presented.1 However, we are unpersuaded by Appellant’s contentions
regarding the Examiner’s rejections of the claims. On this record, we find
1 We note that, given the broadest reasonable interpretation of the claim,
claim 9 does not positively require “presenting a user interface (UI) on a
play” to “enable” a user “to cause the display apparatus to present ancillary
content” to a USB (claim 1). Instead, the “presenting” step is claimed as
depending on whether a condition is satisfied, i.e., “responsive to” receiving
the RF signal at “a” device {id.). Because the claim specifically recites that
presenting step is performed “responsive to receiving the RF signal at a
device,” which condition may not be satisfied, the UI may never be
presented on a display. See Ex parte Schulhauser, Appeal No. 2013-
007847, at *9 (PTAB, April 28, 2016) (precedential) (holding: The
Examiner did not need to present evidence of the obviousness of the
remaining method steps of claim 1 that are not required to be performed
under a broadest reasonable interpretation of the claim (e.g., instances in
which the electrocardiac signal data is not within the threshold
electrocardiac criteria such that the condition precedent for the determining
step and the remaining steps of claim 1 has not been met)).
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no error with the Examiner’s combination of references and ultimate
conclusion that claims would have been obvious over the combined
references.
As a preliminary matter, we note Appellant’s contentions are directed
to 1) what Des Jardins or Krochmal individually fails to teach (App. Br. 4),
and 2) the modification of Des Jardins to incorporate the teachings and
suggestions of Krochmal as suggested by the Examiner is not “envisioned by
either reference” but rather based on “impermissible hindsight” (id. 5).
As to Appellant’s contention 1) that “Des Jardins does not teach the
low energy signal at all” and “the RUSM of Krochmal nowhere envisions
the use of its low energy signal to precipitate the action required in Claim 1”
(App. Br. 4), the test for obviousness is what the combination of Des Jardins
and Krochmal would have suggested to one of ordinary skill in the art. See
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, we find no
error with the Examiner’s reliance on the combination of Des Jardins and
Krochmal for teaching or at least suggesting the contested limitations to one
of ordinary skill in the art. In particular, we agree with the Examiner’s
reliance on Krochmal (and not Des Jardins) for disclosing a “low energy
signal,” such as a Bluetooth Low Energy (BTLE) signal (FF 2), and the
Examiner’s reliance on Des Jardins for teaching and suggesting “receiving
from a display apparatus a radiofrequency (RF) signal” and “responsive to
receiving the RF signal, presenting a user interface (UI) on a display,
enabling a user of the device to cause the display apparatus to present
ancillary content related to primary content” (FF 1), as recited in claim 9.
Final Rej. 11—17.
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As to Appellant’s contention 2) regarding the modification of Des
Jardins as not being envisioned by the references, we are guided by the
Supreme Court’s view of the prior art as a combination of teachings from
different sources and the use of those teachings by a practitioner in the art.
See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007):
To determine whether there was an apparent reason to combine
the known elements in the way a patent claims, it will often be
necessary to look to interrelated teachings of multiple patents; to
the effects of demands known to the design community or
present in the marketplace; and to the background knowledge
possessed by a person having ordinary skill in the art.
(Id.)
The Supreme Court further guides: an improved product in the art is
obvious if that “product [is] not [one] of innovation but of ordinary skill and
common sense.” KSR, 550 U.S. at 421. We find this reasoning is applicable
here.
Here, we find no error with (and Appellant does not contest) the
Examiner’s reliance on Des Jardins to teach and suggest the claimed steps of
“receiving” an RF signal and “presenting” a user interface in response (Final
Rej. 11—17). Thus, the only claimed limitation at issue, not explicitly taught
in Des Jardins, is the RF signal being a low energy signal.
Accordingly, the Examiner relies on Krochmal, with which we agree,
for the teaching and suggestion of receiving a Bluetooth low energy (BFTE)
signal (FF 2), wherein such signal is transmitted from one apparatus to
another “to discover each other” (Ans. 7). Appellant does not contest that
Krochmal discloses such BFTE signal (App. Br. 4).
We then agree with the Examiner that it would have been obvious to a
person of ordinary skill in the art to apply Krochmal’s BFTE signal in the
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system of Des Jardins to “enable [] the devices to discover each other for the
direct transmission of information,” and thus, “presenting content control
element 402 on the display of the user device 124” of Des Jardins “when
another device is in the vicinity” as disclosed by Krochmal (Ans. 7). That is,
the Examiner has provided 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).
We are not persuaded by Appellant’s argument “use the low energy
signal” is not “envisioned by either reference to satisfy a purpose that is not
implicated by Des Jardins” (App. Br. 5). We note our reviewing court
guides: “[a] finding that two inventions were designed to resolve different
problems ... is insufficient to demonstrate that one invention teaches away
from another.” Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d
1319, 1339 (Fed. Cir. 2004). “In determining whether the subject matter of
a patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee [(i.e., the inventor)] controls” in an obviousness
analysis. KSR, 550 U.S. at 419.
We agree with the Examiner that in view of Krochman’s disclosure of
the transmission of a BFTE signal to discover devices in the vicinity (FF 2),
one of ordinary skill in the art would have found it obvious to apply a
discovery signal to the system of Des Jardins (FF 1) before sharing
information between the two display devices of Des Jardins. We find that
Des Jardins does not criticize, discredit, or otherwise discourage
investigation into the claimed solution of a discovery signal provided by
Krochman to discover the devices prior to sharing data. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004).
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Although Appellant contends “Des Jardins relies on the central server
for coordination and thus has no need for the two devices to discover each
other” (App. Br. 5), as the Examiner points out “these arguments appear to
be the Appellant’s own opinion since the Appellant has not cited to any
specific portions of Des Jardins to support these statements” (Ans. 27).
Mere attorney arguments that are unsupported by factual evidence are
entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); Ex
parte Belinne, No. 2009-004693, 2009 WF 2477843, slip op. at *7-8 (BPAI
Aug. 10, 2009) (informative).
Further, the issue here is not whether the ordinarily skilled artisan
would have bodily incorporated the entire system of Krochmal into the
system of Des Jardins. As the Examiner explains, “Des Jardins teaches
direct communication between devices” and “Krochmal teaches the
necessity of discovering nearby devices before directly communicating, and
especially teaches usage of Bluetooth low energy signal (BTFE)” (Ans. 26).
We are unpersuaded that the Examiner errs in concluding that it would have
been obvious to incorporate Krochmal’s discovery of nearby devices to
another data sharing system, such as that of Des Jardins.
As to Appellant’s hindsight contentions (App. Br. 8), we are mindful
the Supreme Court has clearly stated the “combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416(2007).
Here, Appellant has presented no evidence that providing a BFTE
signal for discovering nearby devices in Des Jardins’ data sharing system
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would have been “uniquely challenging or difficult for one of ordinary skill
in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Instead, we find such a
combination of references in the same field of endeavor of data sharing
between devices would have been well within the ordinary level of skill of
the art. See KSR, 550 U.S. at 417. In particular, we find that Appellant’s
invention is simply a modification (adding a BLTE signal for discovering
nearby devices) of familiar prior art teaching of a system for sharing data
between devices (as taught or suggested by Des Jardins) that would have
realized a predictable result to the skilled artisan. The skilled artisan is “a
person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.
On this record, we find no error in the Examiner’s rejection of
independent claim 9 and claims 10, 11, 13, 14, 16, 18, and 20 falling
therewith (App. Br. 3) over Des Jardins and Krochmal. Appellant does not
provide arguments for the rejections of claims 12, 15, 17, and 19.
Accordingly, we also affirm the rejections of claim 17 over Des Jardins and
Krochmal, claims 12 and 19 over Des Jardins and Krochmal in further view
of Kim and Wengrovitz, and of claim 15 over Des Jardins and Krochmal, in
further view of Noda.
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V. CONCLUSION AND DECISION
The Examiner’s rejections of claims 9-20 under 35 U.S.C. § 103(a)
are affirmed.
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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