Ex Parte CandeloreDownload PDFPatent Trial and Appeal BoardDec 26, 201714281158 (P.T.A.B. Dec. 26, 2017) Copy Citation 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. 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 John@rogitz.com 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 Claims 1—8 are withdrawn from consideration (Final Rej. 4).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). Appeal 2017-001064 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) 2 Appeal 2017-001064 Application 14/281,158 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 3 Appeal 2017-001064 Application 14/281,158 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 4 Appeal 2017-001064 Application 14/281,158 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)). 5 Appeal 2017-001064 Application 14/281,158 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. 6 Appeal 2017-001064 Application 14/281,158 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 7 Appeal 2017-001064 Application 14/281,158 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). 8 Appeal 2017-001064 Application 14/281,158 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 9 Appeal 2017-001064 Application 14/281,158 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. 10 Appeal 2017-001064 Application 14/281,158 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 11 Copy with citationCopy as parenthetical citation