Ex Parte Kulas

Patent Trial and Appeal BoardFeb 26, 2016

12172185 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/172, 185 07/11/2008 105758 7590 03/01/2016 Renaissance IP Law Group LLP (Portland - North) 7327 SW Barnes Road #521 Portland, OR 97225 Charles J. Kulas 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. 46103/0810 4417 EXAMINER TRAN,HAIV ART UNIT PAPER NUMBER 2423 NOTIFICATION DATE DELIVERY MODE 03/01/2016 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): matthew. phillips@renaissanceiplaw.com docket. clerk@renaissanceiplaw.com PhillipsPatentLawyer@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHARLES J. KULAS Appeal2014-005284 Application 12/172, 185 Technology Center 2400 Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and ADAM J. PYONIN, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. Â§ 134(a) from a rejection of claims 1-19, 21-25, 27, and 29. 3 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 An oral hearing was held for this appeal on February 16, 2016. 2 Appellant identifies as the real party in interest Fall Front Wireless NY, LLC (App. Br. 1 ). 3 Claim 20 has been canceled and claims 26, 28, and 30 have been objected to, but indicated as allowable if rewritten in independent form to include the limitations of their base claim and any intervening claims (Final Act. 5). Appeal2014-005284 Application 12/172, 185 STATEMENT OF THE CASE Appellant's invention relates to a method and apparatus for displaying tags with a visual association to an item in the displayed video (see Abstract). Claim 1 is illustrative and reads as follows: 1. A method comprising: causing a display device to present a video in a video area of the display device; causing the display device to present a non-video area distinct from the video area of the display device; causing the display device to present a first tag in the video area in association with a first item in the video, wherein the first tag includes descriptive information describing the first item in the video; after causing the display device to present the first tag in the video area, causing the display device to reposition the first tag from the video area to the non-video area; after causing the display device to present the first tag in the video area and causing the display device to repos1t10n the first tag from the video area to the non-video area, receiving from an input device a selection of the first tag; and in response to receiving from the input device the selection of the first tag, performing a predetermined action to provide additional information relating to the first item in the video. The Examiner rejected claims 1--4, 6, 8-11, 16, 18, 19, 21-25, 27, and 29 under 35 U.S.C. Â§ 103(a) as being unpatentable over Ackley (US 7,224,401 B2; May 29, 2007), Amakawa (US 5,680,532; Oct. 21, 1997), and Kikinis (US 5,929,849; July 27, 1999) (see Final Act. 6-16). The Examiner further added Schrock (US 2009/0024927 Al; Jan. 22, 2009) to reject claim 17; Stochosky (US 7,343,561 Bl; Mar. 11, 2008) to 2 Appeal2014-005284 Application 12/172, 185 reject claim 5; Fontes (US 8,073,830 B2; Dec. 6, 2011) to reject claim 7; Gilfix (US 2005/0086690 Al; Apr. 21, 2005) to reject claims 7 and 12; Gilfix and Portuesi (US 5,987,509; Nov. 16, 1999) to reject claims 13-15 under 35 U.S.C. Â§ 103(a) (see Final Act. 16-25). ANALYSIS The Examiner finds Ackley discloses the recited steps of claim 1, but does not teach the steps of "causing the display device to present a first tag in the video area in association with a first item in the video, wherein the first tag includes descriptive information describing the first item in the video" and "after causing the display device to present the first tag in the video area, causing the display device to reposition the first tag from the video area to the non-video area" (Final Act. 7). The Examiner relies on passages in columns 7 and 8 of Amakawa as teaching these missing steps and expiains the proposed modification to Ackiey as foHows: Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Ackley by having the system to integrate the method of displaying an element at a location/position of the screen's display while playing the video content and then causing the display device to reposition the presented element from its location/position to another location/position of the screen's display, as taught by Amakawa .... (Final Act. 8). The Examiner further relies on Kikinis for disclosing "the first tag includes descriptive information describing the first item in the video" and "performing a predetermined action to provide additional information relating to the first item in the video" (Final Act. 9). 3 Appeal2014-005284 Application 12/172, 185 Appellant contends the combination of Ackley and Amakawa is improper because causing the subtitles or similar text, as disclosed by Ackley, to move based on the teachings of Amakawa "would have been contrary to common sense" (App. Br. 18). Appellant also argues that such combination would be against Ackley' s teaching to "always place the subtitles and similar text in the unused portion, never on the video portion" (App. Br. 18-19). Appellant further contends the combination would be contrary to Ackley's intended purpose of taking advantage of the unused portion of the display for the subtitles (App. Br. 20). 4 The Examiner responds by explaining that causing "'graphical interface elements', i.e., icons, advertisements, etc ... , to be displayed on the video portion for a very short of [sic] period of time and then to undergo motion, like moving an object, as taught by Amakawa's system" would not be against common sense because: [D]oing otherwise would not creating [sic] a visual effect of repositioning Ackley's icons, advertisements, menu screen and overlay text besides of subtitles from the video portion into the unused portions of the screen thereby eliminating any visual conflict between video and the objects of the video while at the same time creating a visual effect would not been contrary to common sense, as alleged by Appellant. (Ans. 4). The Examiner further reasons that: Moreover, Ackley does not preclude/exclude from the possibility of having icons, advertisements, menu screen, overlay text and/or subtitles to be displayed on the video portion for a very short of period of time and then dynamically move/assign icons, advertisements, menu screen and overlay 4 We do not address Appellant's other arguments because the contentions discussed here are dispositive. 4 Appeal2014-005284 Application 12/172, 185 text besides of subtitles into the into the [sic] unused portions of the screen. (Ans. 4--5). As asserted by Appellant (Reply Br. 1-2), Ackley always places the text in the unused space on the screen rather than placing the text on the video portion and then moving the text to the unused portion. Ackley describes improving the existing systems, which place the text over the video content, by positioning the text in the unused portion in order to enhance the readability of the text (col. 3, 11. 26-31 ). That is, by taking advantage of the unused areas of the display when the aspect ratio of the video and the screen differ, the text is always placed on the unused portion of the screen, instead of first placing the text on the video portion and then moving the text to the unused portion. The Examiner's conclusion that the text could be displayed on the video portion for a short period of time and then dynamically moved into the unused portion of the screen is based on probability and speculation, and not based on any teaching of Ackley. The Examiner may not, because of doubt that the invention is patentable, resort to speculation, unfounded assumption or hindsight reconstruction to supply deficiencies in the factual basis for the rejection. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly, Appellant's arguments have persuaded us of error in the Examiner's position with respect to the rejection of independent claim 1, independent claims 9 and 10, which recite similar limitations, and claims 2- 8, 11-19, 21-25, 27, and 29 dependent therefrom. 5 Appeal2014-005284 Application 12/172, 185 DECISION The Examiner's decision to reject claims 1-19, 21-25, 27, and 29 is reversed. REVERSED 6