Ex Parte KIM et alDownload PDFPatent Trial and Appeal BoardAug 28, 201813595056 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/595,056 08/27/2012 2292 7590 08/30/2018 BIRCH STEW ART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East FALLS CHURCH, VA 22042-1248 FIRST NAMED INVENTOR Soyoung KIM 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. 3449-2801 PUS 1 3168 EXAMINER SCHNURR, JOHN R ART UNIT PAPER NUMBER 2425 NOTIFICATION DATE DELIVERY MODE 08/30/2018 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@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SOYOUNG KIM and RYOUNG KIM Appeal 2018-001557 Application 13/595,056 1 Technology Center 2400 Before: TERRENCE W. MCMILLIN, KARA L. SZPONDOWSKI, and SCOTT B. HOWARD, Administrative Patent Judges. HOW ARD, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1, 3-15, 21, 28, 30-32, 34--36, and 38--40, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellants identify LG Electronics Inc. as the real party in interest. App. Br. 2. Appeal 2018-001557 Application 13/595,056 THE INVENTION The disclosed and claimed invention is directed to a "method of sharing contents with an external device in an image display device." Spec. 1.2 Claim 1, reproduced below with the disputed limitations italicized, is illustrative of the claimed subject matter: 1. An image display device comprising: a display configured to play a first content on a screen; a wireless communication unit configured to communicate with an external image display device; and a controller configured to: display, on the screen, an icon for sharing the first content with an external image display device while playing the first content on the screen, wherein the external image display device is capable of displaying the first content provided from the image display device; pause play of the first content that is being played on the screen when the icon is selected; search for at least one external image display device while pausing to play the first content; display, on the screen, a sharing device list that includes the searched at least one external image display device; create information on the first content's reproduction state including content title information and content play time information when the icon is selected; 2 We refer to the Specification filed Aug. 27, 2012 ("Spec."); Final Office Action mailed Feb. 28, 2017 ("Final Act."); Appeal Brief filed July 26, 2017 ("App. Br."); Examiner's Answer mailed Oct. 26, 2017 ("Ans."); and the Reply Brief filed Nov. 28, 2017 ("Reply Br."). 2 Appeal 2018-001557 Application 13/595,056 receive a selection signal for selecting one among the at least one external image display device included in the sharing list; in response to receiving the selection signal, transmit the first content to the selected one external image display device; display a paused image of the first content on the screen simultaneously with the sharing device list when the icon is selected; receive a request for playing a second content on the image display device; in response to receiving the request, display the second content on the screen of the image display device while continuously transmitting the first content to the selected external image display device; and receive notice that a sharing of the first content has been rejected by the selected one external image display device. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Lee et al. US 2005/0055713 Al Mar. 10,2005 (hereinafter "Lee") Park US 2006/0029374 Al Feb.9,2006 Jacoby et al. US 2006/0271959 Al Nov. 30, 2006 (hereinafter "Jacoby") Kondo et al. US 2009/0064233 Al Mar. 5, 2009 (hereinafter "Kondo") Sheth et al. US 2009/0113472 Al Apr. 30, 2009 (hereinafter "Sheth") 3 Appeal 2018-001557 Application 13/595,056 Kim et al. (hereinafter "Kim") US 2009/0113495 Al Apr. 30, 2009 Shimy et al. US 2011/0069940 Al Mar. 24, 2011 (hereinafter "Shimy") Klappert US 2011/0150431 Al June 23, 2011 Gossweiler, III et al. US 2011/0214148 Al Sept. 1, 2011 (hereinafter "Gossweiler") Nijim Felt et al. (hereinafter "Felt'') Hassan et al. (hereinafter "Hassan") US 2012/0054808 Al Mar. 1, 2012 US 2012/0072944 Al Mar. 22, 2012 US 8,589,991 B2 Nov. 19, 2013 REJECTIONS Claims 1, 5, 8, 10, 12-14, 21, 28, 30, 31, 35, and 37 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Hassan, Gossweiler, Nijim, Shimy, and Jacoby. Final Act. 2-3. 3 Claims 31, 32, 34--36, and 38 stand rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Hassan, Gossweiler, and Nijim. Final Act. 11. Claim 3 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Hassan, Gossweiler, Nijim, Shimy, Jacoby, and Lee. Final Act. 7. 3 The Examiner's statement of rejection omits independent claims 31 and 35. See Final Act. 2. However, claims 31 and 35 are included in the body of the Examiner's rejection. See Final Act. 6. We consider this omission to be harmless typographical error. 4 Appeal 2018-001557 Application 13/595,056 Claims 4 and 11 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hassan, Gossweiler, Nijim, Shimy, Jacoby, Lee, and Klappert. Final Act. 7. Claim 6 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hassan, Gossweiler, Nijim, Shimy, Jacoby, and Kondo. Final Act. 8. Claim 7 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hassan, Gossweiler, Nijim, Shimy, Jacoby, and Sheth. Final Act. 9. Claim 9 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hassan, Gossweiler, Nijim, Shimy, Jacoby, and Felt. Final Act. 9. Claim 15 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hassan, Gossweiler, Nijim, Shimy, Jacoby, and Kim. Final Act. 10. Claims 39 and 40 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Hassan, Gossweiler, Nijim, Shimy, Jacoby, and Park. Final Act. 13. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments that the Examiner erred. In reaching this decision, we have considered all evidence presented and all arguments made by Appellants. We are not persuaded by Appellants' arguments regarding the pending claims. 5 Appeal 2018-001557 Application 13/595,056 Appellants contend Shimy does not teach "receive a request for playing a second content on the image display device" and "in response to receiving the request, display the second content on the screen of the image display device while continuously transmitting the first content to the selected external image display device," as recited in claim 1. App. Br. 8, 11-12. Specifically, Appellants argue Shimy teaches "providing second media content or continuing to provide the first media content," but not displaying the second content on the screen of the first display device while continuously transmitting the first content to an external device. App. Br. 8; see also Reply Br. 2. We agree with the Examiner's findings that Shimy teaches when one user wishes to continue watching the first content in another room, providing the first content to the device in the other room, and that the remaining users for the first content in the first room may change to other content. Ans. 4. As cited by the Examiner (Final Act. 4--5; Ans. 4), Shimy teaches an example where "if Elaine has gotten tired and prefers to continue access of the content from her bedroom, she may select to have content provided at a device in her bedroom." Shimy ,r 151. In this example, previously, "George, Elaine, and Jerry were accessing first media content together." Shimy ,r 150. Shimy also teaches "the remaining users at a device may choose to change the provided content when a user has left the detection region of the device." Shimy ,r 153. In other words, Shimy teaches Elaine selecting to have content (i.e., first content), currently being accessed on a first device in a first room (i.e., image display device) by Elaine, George, and Jerry, played on a second device in a second room (i.e., transmitting the first content to the selected external image display device), and then 6 Appeal 2018-001557 Application 13/595,056 allowing George and Jerry to change the content provided on the first device (i.e., requesting for playing second content on the image display device, and displaying the second content on the screen of the image display device). Appellants have not persuasively argued how Shimy's example of users requesting second content to be played on a first device (i.e., George and Jerry choosing to change the provided content on a device in a first room), while continuing to play first content for a user on a second device (i.e., Elaine selecting to play first content on a device in her bedroom), does not teach or otherwise suggest the claimed receiving a request for playing a second content on the image display device and displaying the second content on the screen of the image display device while continuously transmitting the first content to the selected external image display device. Appellants further contend Gossweiler does not teach "display[ing] a paused image of the first content on the screen simultaneously with the sharing device list when the icon is selected," as recited in claim 1. App. Br. 10, 11-12. Specifically, Appellants argue Gossweiler does not simultaneously display the image of the first content with the sharing device list because Gossweiler's sharing device list occupies the entire screen. App. Br. 10. Appellants also argue Gossweiler's background is a "generic background, not a paused image of the first content." Reply Br. 2. We agree with the Examiner's finding that Gossweiler teaches a list that is displayed in the foreground and overlaid on the paused image of the program displayed in the background. Ans. 5. For example, as cited by the Examiner (Ans. 5; Final Act. 3--4), Gossweiler teaches"[ w ]hile watching or listening to a program, if the user decides to share the content, pressing a button on their remote control can bring up a list of friends 140, as shown in 7 Appeal 2018-001557 Application 13/595,056 Fig. IF, and the user can share the current content easily with them," and that the "playing program may be paused automatically until the sharing actions are complete." Gossweiler ,r 58 ( emphasis added). Gossweiler also describes that "a display for sharing content with friends is shown, where the list of friends is ... laid over the main television display," and that "[ s ]uch a display may be generated at any point where a user indicates an intent to share content that they are reviewing." Gossweiler ,r 59 ( emphasis added). In other words, Gossweiler describes automatically pausing content to select friends with whom to share the content, and displaying the selectable list of friends laid over the television display ( which is paused until the sharing actions are complete). Appellants have not persuasively argued how Gossweiler' s displaying of a list of friends (i.e., displaying a sharing device list) laid over content that is automatically paused so the desired content can be shared (i.e., simultaneously displaying a paused image of the first content when the icon is selected) does not teach or other suggest the claimed "display[ing] a paused image of the first content on the screen simultaneously with the sharing device list when the icon is selected." Appellants further contend Nijim does not teach "create information on the first content's reproduction state including content title information and content play time information when the icon is selected," as recited in claim 1. App. Br. 12. Specifically, Appellants argue Nijim teaches placing a time stamp where a playlist is paused or stopped, but not the creation of content title information and content play time information when the icon for sharing the content is selected. Id. 8 Appeal 2018-001557 Application 13/595,056 During examination of a patent application, a claim is given its broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Claim 1 does not recite limitations further defining how information is created, and rather merely requires creating information including content title information and content play time information when the icon is selected. Appellants' Specification merely provides non-limiting examples that the control unit "may create information on the content reproduction state at the time in which the 'Send to' icon 611 is selected, such as content title information, content play time information, or the like." Spec. 22: 1-5. Appellants' Specification further provides for "the selected external image display device may receive information on the contents reproduction state from the image display device." Spec. 23: 18-20. Accordingly, applying the broadest reasonable construction, we find the claimed "create information on the first content's reproduction state including content title information and content play time information when the icon is selected" does not preclude the availability of content title information and content play time information, related to video distribution (i.e., the external image display device receiving the content information), when the icon is selected. Because Appellants' arguments are not commensurate with the scope of the claims, they are unpersuasive. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Furthermore, Appellants' argument against Nijim separately from Hassan, Gossweiler, Shimy, and Jacoby does not persuasively rebut the combination made by the Examiner. One cannot show non-obviousness by attacking references individually, where the rejections are based on 9 Appeal 2018-001557 Application 13/595,056 combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,425 (CCPA 1981). Specifically, we agree with the Examiner's finding that the combination of Hassan and Gossweiler teaches a user selecting an icon to share content and transmitting the content to a selected external device. Ans. 6 (citing Hassan col. 9, 11. 59---64, col. 10, 1. 57---col. 12, 1. 12, Figs. 3, 4; Gossweiler ,r,r 59, 71, 153, Fig. IF). Nijim is relied upon only to teach the availability of content title information and play time information at the time of content selection. See Ans. 6. For example, as cited by the Examiner (Ans. 6), Nijim teaches "a user can select program listings by moving highlight region" and "[i]nformation relating to the program listing selected by highlight region 110 may be provided in program information region 112," including "for example, the program title . . . the time the program is provided ... and other desired information." Nijim ,r 36. In other words, Nijim teaches the availability of information including program title, program time, and other desired information, displayed when selecting a program. Appellants have not persuasively argued how the claimed "create information on the first content's reproduction state including content title information and content play time information when the icon is selected," encompassing making available content title information and content play time information when the icon is selected, is not taught or otherwise suggested by Nijim's displaying (i.e., making available) program title (i.e., content title information) and time or other desired information (i.e., content play time information) when selecting a program (i.e., when the icon is selected). 10 Appeal 2018-001557 Application 13/595,056 Appellants further argue, for the first time in the Reply Brief, that Shimy is not relied on in the rejection of claims 31 and 35. Reply Br. 2. Appellants' contention in the Reply Brief is untimely. 37 C.F.R. § 41.41 (b )(2) (2012) ("Any argument raised in the reply brief which was not raised in the appeal brief ... will not be considered by the Board for purposes of the present appeal, unless good cause is shown."). Here, no good cause having been shown, Appellants have waived such untimely argument. Moreover, even if we consider Appellants' argument regarding whether the Examiner relies on Shimy in rejecting claims 31 and 35, we note the Examiner relies on Shimy to teach the disputed limitations of claims 31 and 35 in the first of two alternative rejections. Compare Final Act. 6 (ground of rejections including Shimy), with id. at 11 (ground of rejection not including Shimy). Appellants acknowledge this alternative rejection with respect to claims 31 and 35. App. Br. 13, 14 ("The arguments against Shimy disclosing this feature, and therefore the combination of prior art not resulting in a system having this features, are set forth with respect to claim 1 O."). Accordingly, we sustain the Examiner's rejection of claim 1, along with the rejections of independent claims 10, 31, and 35, for which Appellants rely on the same arguments as discussed above for claim 1, along with dependent claims 3-9, 11-15, 21, 28, 30, 32, 34, 36, and 38, which are not separately argued. Appellants further contend the references do not teach "wherein the paused image of the first content is a thumbnail image," as recited in claims 39 and 40. App. Br. 15-16. The entirety of Appellants' argument consists 11 Appeal 2018-001557 Application 13/595,056 of a single sentence constituting a general denial: "Moreover, Hassan and Gossweiler do not display a thumbnail image of the content first content along with a list of external devices, as now recited in independent claim 1 and 10 and new claims 39 and 40." Id. With respect to these additional limitations in claims 39 and 40, Appellants have failed to rebut the Examiner's findings. To show error in the Examiner's position, Appellants must explain why the relied-upon disclosure does not disclose the claimed feature, rather than merely alleging that the feature is not shown. Instead, Appellants merely quote or summarize the claim language and make a naked assertion that the prior art does not teach the limitation. That is insufficient to raise an argument that the Examiner erred. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37 requires "more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."); see also 37 C.F.R. § 4I.37(c)(l)(iv) ("A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."). Accordingly, we sustain the Examiner's rejection of claims 39 and 40. DECISION For the above reasons, we affirm the Examiner's decisions rejecting claims 1, 3-15, 21, 28, 30-32, 34--36, and 38--40. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). See 3 7 C.F.R. § 4I.50(f). AFFIRMED 12 Copy with citationCopy as parenthetical citation