Ex Parte Henshaw et alDownload PDFPatent Trial and Appeal BoardAug 8, 201612586923 (P.T.A.B. Aug. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/586,923 09/28/2009 Jeffrey David Henshaw 98783 7590 08/10/2016 Perkins Coie LLP - DEN General P.O. Box 1247 Seattle, WA 98111-1247 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. 111094-8004.USOO 2703 EXAMINER ULRICH, NICHOLAS S ART UNIT PAPER NUMBER 2173 NOTIFICATION DATE DELIVERY MODE 08/10/2016 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): patentprocurement@perkinscoie.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEFFREY DAVID HENSHAW, ALEXANDER IRVIN HOPMANN, CHRISTOPHER ANDREW EV ANS, and DANIEL EV AN SOCOLOF Appeal2015-002235 Application 12/586,923 Technology Center 2100 Before LINZY T. McCARTNEY, MELISSA A. HAAPALA, and MATTHEW J. McNEILL, Administrative Patent Judges. RAAP ALA, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, and 5-7, which are all of the claims currently pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. Appeal2015-002235 Application 12/586,923 REJECTION ON APPEAL Claims 1, 2, and 5-7 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Abrams (US 2006/0104600 Al; May 18, 2006), Glaser (US 2005/0060751 Al; Mar. 17, 2005), and Keener (US 2008/0270541 Al; Oct. 30, 2008). ISSUE Appellants' contentions present us with the following dispositive issue: Did the Examiner set forth sufficient articulate reasoning, with rational underpinnings, to support combining the teachings of Abrams, Glaser, and Keener? ANALYSIS We have reviewed the Examiner's rejection in consideration of Appellants' contention and the evidence of record. We agree with Appellants that the Examiner has failed to establish the claims are unpatentable over the cited prior art. The Examiner relies on Keener to teach transmitting user initiated feedback messages to an object of the selected stream and not to objects of non-selected streams, as recited in the claims. Final Act. 4. The Examiner concludes it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the teachings of Abrams and Glaser to include Keener's teachings of transmitting feedback "in order to obtain transmitting user initiated feedback messages to an object of a selected stream and not to objects of non-selected streams." Final Act. 4. The Examiner finds "[i]t would have been advantageous for one to utilize such a combination as providing enhancements to traditional approaches of 2 Appeal2015-002235 Application 12/586,923 providing live content over the internet, as suggested by Keener and would provide a mechanism for a user to provide feedback to a performer in their current focus. Final Act. 4 (citing Keener i-fi-1 4--5). See also Ans. 6. Appellants contend the Examiner has not identified a reason that would have prompted a person of ordinary skill in the relevant field to combine the prior are elements in the manner claimed, but rather has merely identified shared advantages that Appellants' invention "as claimed" share with the invention "as combined" from the cited references. App. Br. 7. Appellants argue the "shared advantage test" cannot qualify as a reason to make the combination because any combination that would arrive at an invention will always and necessarily share the same advantages as the invention. Id. Appellants further argue the Examiner's reason to combine strongly suggests the use of improper hindsight. Reply Br. 5. "[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We agree with Appellants that the Examiner's reason to combine does not have the requisite rational underpinning required to support the legal conclusion of obviousness. See App. Br. 7. The Examiner's rationale for combining Keener's teaching of providing viewers a mechanism to provide feedback to a talent person speaking live to the viewer over the web (Keener i-fi-150-52) with Glaser's teaching for permitting attendees at a public performance to selectively view video of a performer (Glaser i-fi-f 11, 24) and Abram's teaching of selecting a video stream (camera angle) for a live event (Abram i1 65) essentially consists of a conclusion that the combination would result 3 Appeal2015-002235 Application 12/586,923 in the claimed invention. In KSR, the Supreme Court guides that "[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of argument reliant upon ex post reasoning." KSR, 550 U.S. at 421. The Examiner's articulated reasoning is insufficient to support the combination because it improperly uses the benefit of Appellants' claims as a guide and relies upon ex post reasoning. For the reasons stated above, Appellants persuade us of error in the rejection of claims 1, 2, and 5-7. Accordingly, we do not sustain the 35 U.S.C. § 103(a) rejection of these claims. DECISION We reverse the Examiner's decision to reject claims 1, 2, and 5-7. REVERSED 4 Copy with citationCopy as parenthetical citation