Ex Parte Hofrichter

Patent Trial and Appeal Board

Jun 24, 2014

12142158 (P.T.A.B. Jun. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KLAUS HOFRICHTER1
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Appeal 2012-003117
Application 12/142,158
Technology Center 2100
__________

Before LORA M. GREEN, MELANIE L. McCOLLUM, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a TV
system and method. The Examiner has rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter a new
ground of rejection.
STATEMENT OF THE CASE
Claims 1-19 are pending and on appeal (App. Br. 2). Claims 1, 8, 9,
and 17 are representative and read as follows:
1. A TV system, comprising:

1 Appellant identifies the real parties in interest as Sony Corp. and Sony
Electronics, Inc. (App. Br. 2).
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a TV display; and
a processor automatically presenting, in a loop, a sequence of feature
presentations on the display advertising respective features of the TV, the
processor automatically presenting the loop at power on of the TV display,
the processor presenting an onscreen menu on the TV display by which a
user may disable presentation of the loop, the processor also presenting an
onscreen menu on the TV display by which a user may reenable presentation
of the loop.
8. The system of Claim 1, wherein the processor disables feature
presentation in response to a user entering a setup mode of the TV.
9. A TV system, comprising:
a TV display;
a TV tuner configured to receive TV signals for presentation on the
display; and
a processor communicating with the display to send feature
presentation images thereto in a loop in a first sequence of feature
presentation images automatically at least while the TV is energized in a
retail outlet, such that consumers can view the display to learn what features
are possessed by the TV, the processor receiving consumer input to cause
the processor to change the sequence of presentation of the feature
presentation images in the loop from the first sequence of feature
presentation images to a second sequence of feature presentation images, the
first sequence of feature presentation images being different from the second
sequence of feature presentation images.
17. A method, comprising:
loading, onto a digital storage medium associatable with a TV, a script
executable by a processor in the TV;
loading, onto the medium, content related to features possessed by the
TV;
when the TV is energized in a retail outlet, causing the processor
under control of the script to display the content on the TV; and
enabling viewer manipulation of the script in the retail outlet to
include local advertisement and real-time data received from a network.
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Claims 1-16 stand rejected under 35 U.S.C. § 103(a) as obvious over
Flynn2 in view of Mortensen3 (Ans. 5).
Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as obvious
over Mortensen in view of WireSpring4 (Ans. 10).
Claim 19 stands rejected under 35 U.S.C. § 103(a) as obvious over
Mortensen in view of WireSpring and Flynn (Ans. 11).
I
The Examiner relies on Flynn for teaching a TV system comprising “a
TV display” and “a processor automatically presenting . . . a sequence of
feature presentations on the display advertising respective features of the
TV” (Ans. 5). The Examiner finds:
Flynn additionally teaches the processor automatically
presenting the feature presentation at power on of the TV
display . . . , the processor presenting an onscreen menu on the
TV display by which a user may disable presentation of the
feature, [and] the processor . . . presenting an onscreen menu on
the TV display by which a user may re-enable the presentation.
(Id.) The Examiner also finds that, “[w]hile one skilled in the art could infer
that Flynn’s feature presentations would continuously display, Flynn does
not explicitly teach presenting the feature presentations in a loop” (id.).
The Examiner relies on Mortensen for disclosing “a similar TV
feature presentation (demo) which discloses that the feature presentation can
be looped” (id.). With regard to claim 9, the Examiner additionally relies on

2 Flynn, US 2009/0158314 A1, June 18, 2009.
3 Mortensen, US 2009/0153736 A1, June 18, 2009.
4 WireSpring, Point-of-Purchase/POP Displays - How digital retailing
technologies are creating new in-store display options (2007),
http://wirespring.com/Solutions/pop_displays.html.
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Mortensen for disclosing “that the feature presentation images can be
displayed in various ways . . . which would account for having the features
displayed in different sequences” (id. at 8). The Examiner concludes that it
would have been obvious “to have combined the TV system of Flynn with
the looping of the feature presentations of Mortensen to provide a constant
display of TV features to multiple consumers thereby increasing the
effectiveness of displaying the TV features” (id. at 6 & 8).
Analysis
With regard to claim 1, Appellant argues that the “allegation is clear
factual error that Flynn, paragraph 22 teaches automatically presenting the
loop at power on of the TV display” (App. Br. 4). We are not persuaded.
As noted by the Examiner (Ans. 5), Flynn discloses that “the demo
mode [being] on . . . can be the default setting when the television leaves the
manufacturer’s factory” (Flynn ¶ 22). As noted by Appellant (Reply Br. 1-
2), Flynn also discloses:
If the operator chooses to turn the demo mode on, . . . a “demo”
menu 48 is displayed from which the operator can select POP
(point of purchase) feature to activate the video display of
television features. Next, a POP feature display mode menu 47
is displayed to the operator enabling the operator to choose the
mode by which the POP feature images are to be displayed.
(Flynn ¶ 22.) However, Flynn additionally discloses that these selections
may have default settings (id. at Fig. 6). Thus, we agree with the Examiner
that Flynn in view of Mortensen suggests that the processor automatically
presents the loop at power on of the TV display.
With regard to claim 8, Appellant argues that the “allegation is clear
reversible error that Flynn, paragraph 22 teaches disabling feature
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presentation in response to a user entering a setup mode of the TV” (App.
Br. 4). In particular, Appellant argues: “Paragraph 22 permits disabling the
‘demo’ mode by proper selection of the setup menu 44 - not in response to
entering the setup mode as claimed. In other words, a user can enter the
setup mode in Flynn and nothing occurs, unlike Claim 8, until the user
makes a selection.” (Id.)
In response, the Examiner finds:
[T]he broadest reasonable interpretation of the claim phrase “in
response” does not preclude the added steps of the user having
to manually disable the feature presentation. . . . [T]he user has
to enter the setup mode first in order to disable the feature.
Therefore the disabling of the feature presentation as disclosed
by Flynn teaches “in response” to entering the setup mode even
though manual disabling follows the entering of the setup
mode.
(Ans. 13.) We conclude that Appellant has the better position.
As noted by Appellant (Reply Br. 2-3), the Specification discloses:
“In some embodiments, the above-described automatic launch at power on is
disabled when a customer runs ‘setup’ in the home. ‘Setup’ ordinarily is
accessed from an initial menu and entry of the setup mode may be used as a
signal to the TV processor 18 to disable the script.” (Spec. 6.) Thus, the
Specification discloses that the feature presentation is disabled upon entry of
the setup mode, which is consistent with Appellant’s interpretation of the
claim phrase “in response to.” The Examiner does not point to any teaching
in the Specification that would suggest a broader interpretation of this
phrase. Thus, we conclude that the evidence supports Appellant’s
interpretation being the broadest reasonable interpretation consistent with
the Specification.
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With regard to claim 9, Appellant argues:
The allegation is clear reversible error that Mortensen,
paragraphs 20 and 21 teaches receiving consumer input to cause
the processor to change the sequence of presentation of the
feature presentation images in the loop from a first sequence of
feature presentation images to a second sequence of feature
presentation images, with the first sequence of feature
presentation images being different from the second sequence
of feature presentation images. Paragraphs 20 and 21 simply
set forth various compositions of a video sequence, not that
they are changeable by a user as claimed.
(App. Br. 4-5.)
In response, the Examiner finds that “it would be reasonable to
include the various sequences of features as one of the settings that the user
can manipulate” (Ans. 14). However, we agree with Appellant that this is
insufficient to set forth a prima facie case of obviousness (Reply Br. 3).
Conclusion
The evidence supports the Examiner’s conclusion that Flynn and
Mortensen suggest the system of claim 1. We therefore affirm the
obviousness rejection of claim 1. Claims 2-7 have not been argued
separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner has not, however, set forth a prima facie case that
claims 8 and 9 would have been obvious. We therefore reverse the
obviousness rejection of claims 8 and 9 and of claims 10-16, which depend
from claim 9.
II
In rejecting claim 17, the Examiner relies on Mortensen for teaching a
method comprising: “loading, onto a digital storage medium . . . associable
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with a TV (Fig. 7), a script executable by a processor in the TV”; “loading,
onto the medium, content related to features possessed by the TV”; “when
the TV is energized in a retail outlet, causing the processor under control of
the script to display the content on the TV”; and “enabling viewer
manipulation of the script in the retail outlet” (Ans. 10). The Examiner finds
that, “[w]hile Mortensen teaches viewer manipulation of the script through
the setup menu, he does not explicitly teach enabling the viewer
manipulation of the script in the retail outlet to include local advertisement
and real-time data received from a network” (id.).
The Examiner relies on WireSpring for disclosing “Point of Purchase
displays as electronic, dynamically updated point of purchase displays that
present targeted product information which allows for near real-time content
updates, allowing brand managers to run geographically target[ed]
promotion campaigns” (id. at 11). The Examiner concludes that it would
have been obvious “to recognize the advantage of displaying targeted
product information as well as real-time content updates as disclosed in
WireSpring[] with the teachings of Mortensen to have a dramatic impact on
sales for a particular product that reinforce the core message” (id.).
In rejecting claim 19, which ultimately depends from claim 17, the
Examiner additionally relies on Flynn (id. at 11-12).
Analysis
With regard to claim 17, as well as claims 18 and 19, which depend
from claim 17, Appellant argues that page 1 of WireSpring “at most teaches
near real time updates in general and does not at all address the specific
limitations recited in Claim 17” (App. Br. 5). We are not persuaded.
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WireSpring discloses that the “software used to control these dynamic
POP displays typically allows for near-real time content updates, allowing
brand managers to run instant marketing experiments, geographically
targeted promotions campaigns, and more” (WireSpring 1). Whether or not
the Examiner is correct that “the term ‘near real-time’ is equivalent to ‘real
time’” (Ans. 15), we conclude that WireSpring’s teaching of near real-time
content updates at least suggests real-time data received from a network.
Conclusion
The evidence supports the Examiner’s conclusion that Mortensen and
WireSpring suggest the method of claim 17. We therefore affirm the
obviousness rejection of claim 17. Claim 18 has not been argued separately
and therefore falls with claim 17. 37 C.F.R. § 41.37(c)(1)(vii).
Appellant has waived any argument with regard to the features
additionally recited in claim 19. See 37 C.F.R. § 41.37(c)(1)(vii) (“Any
arguments or authorities not included in the brief or a reply brief . . . will be
refused consideration by the Board, unless good cause is shown.”). We
therefore also affirm the obviousness rejection of claim 19 for the same
reasons as claim 17.
III
In reversing the rejection of claim 9, we gave weight to the recitation:
the processor receiving consumer input to cause the processor
to change the sequence of presentation of the feature
presentation images in the loop from the first sequence of
feature presentation images to a second sequence of feature
presentation images, the first sequence of feature presentation
images being different from the second sequence of feature
presentation images.
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In particular, we interpreted this recitation to require that the TV system be
configured to receive the recited consumer input.
However, the language of claim 9 actually recites that the processor is
“receiving” this consumer input, which makes it unclear as to whether
claim 9 is directed to a product or a method. IPXL Holdings, L.L.C. v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (“Because [the]
claim . . . recites both a system and the method for using that system, it does
not apprise a person of ordinary skill in the art of its scope, and it is invalid
under section 112, paragraph 2.”). Therefore, we reject claim 9, as well as
claims 10-16, which depend from claim 9, under 35 U.S.C. § 112, second
paragraph, as indefinite.
SUMMARY
We affirm the obviousness rejections of claims 1-7 and 17-19.
However, we reverse the obviousness rejection of claims 8-16. In addition,
we enter a new ground of rejection against claims 9-16 under 35 U.S.C.
§ 112, second paragraph.
TIME PERIOD FOR RESPONSE
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
that “Appellant may file a single request for rehearing within two months
from the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
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37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART, 37 C.F.R. § 41.50(b)

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