Ex Parte Kunigita et al

Patent Trials and Appeals BoardJan 16, 2019

14117891 - (D) (P.T.A.B. Jan. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/117,891 02/27/2014 26304 7590 01/18/2019 KATTEN MUCHIN ROSENMAN LLP 575 MADISON A VENUE NEW YORK, NY 10022-2585 FIRST NAMED INVENTOR Hisayuki Kunigita 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. SCED25468(100809-00655) 2452 EXAMINER LUU,DAVIDV ART UNIT PAPER NUMBER 2171 NOTIFICATION DATE DELIVERY MODE 01/18/2019 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): nycuspto@kattenlaw.com samson.helf gott@kattenlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RISA YUKI KUNIGITA, SEUNG-HYUN LEE, JAE-HYUN PARK, and JU-YEONG JI Appeal 2018-003 317 Application 14/117 ,891 Technology Center 2100 Before JOHNNY A. KUMAR, CARLL. SILVERMAN, and STEVEN M. AMUNDSON, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-8, i.e., all pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellants identify the real party in interest as Sony Computer Entertainment Inc. App. Br. 2. Appeal 2018-003317 Application 14/117 ,891 STATEMENT OF THE CASE The Invention According to the Specification, the "invention relates to a content player for a user to view a variety of content, a content viewing management system, content player control method and information storage medium." Spec. ,r 1. 2 The Specification explains that (1) a "content player acquires viewing history information about content viewed by a related user related to the user with a content player different from the content player"; (2) the "content player presents, to the user, the acquired viewing history information"; and (3) the "content player performs, if the user selects the presented viewing history information, a playing process of content indicated by the selected viewing history information." Id. Abstract; see id. ,r,r 6-12. Exemplary Claim Independent claim 1 exemplifies the claims at issue and reads as follows: 1. A content player configured to perform a content playing process in response to an instruction by a user, the content player comprising: viewing history information acquisition means of acquiring viewing history information about content viewed by a related user related to the user with a content player different from the content player; 2 This decision uses the following abbreviations: "Spec." for the Specification, filed February 27, 2014; "Final Act." for the Final Office Action, mailed February 22, 2017; "Adv. Act." for the Advisory Action, mailed May 15, 2017; "App. Br." for the Appeal Brief, filed August 17, 2017; "Ans." for the Examiner's Answer, mailed December 4, 2017; and "Reply Br." for the Reply Brief, filed January 26, 2018. 2 Appeal 2018-003317 Application 14/117 ,891 viewing history information presentation means of presenting, to the user, the viewing history information about content viewed by the related user acquired by the viewing history information acquisition means; and content playing means of performing, if the user selects the viewing history information presented by the viewing history information presentation means, a playing process of content indicated by the selected viewing history information. App. Br. 11 (Claims App.). The Prior Art Supporting the Rejections on Appeal As evidence of unpatentability under 35 U.S.C. Â§ 103(a), the Examiner relies on the following prior art: Rokosz et al. ("Rokosz") US 2006/0168529 Al July 27, 2006 Kakumu et al. ("Kakumu") US 2008/0118232 Al May 22, 2008 Siegel et al. ("Siegel") US 2008/0168073 Al July 10, 2008 Sakai et al. ("Sakai") US 2009/0133071 Al May 21, 2009 Ashutosh et al. ("Ashutosh") US 2009/0300520 Al Dec. 3, 2009 Roberts et al. ("Roberts") US 2012/0174162 Al July 5, 2012 The Rejections on Appeal Claims 1 and 5-7 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Sakai and Roberts. Final Act. 5-10; Ans. 3. Claim 2 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Sakai, Roberts, and Kakumu. Final Act. 10-11; Ans. 3. Claim 3 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Sakai, Roberts, and Rokosz. Final Act. 11-12; Ans. 3. Claim 4 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Sakai, Roberts, Rokosz, and Ashutosh. Final Act. 12-13; Ans. 3. 3 Appeal 2018-003317 Application 14/117 ,891 Claim 8 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Sakai, Roberts, and Siegel. Final Act. 13-14; Ans. 4. ANALYSIS We have reviewed theÂ§ 103(a) rejections in light of Appellants' arguments that the Examiner erred. For the reasons explained below, we concur with the Examiner's conclusions concerning unpatentability under Â§ 103(a). We adopt the Examiner's findings and reasoning for theÂ§ 103(a) rejections in the Final Office Action (Final Act. 5-16) and Answer (Ans. 3-8). We add the following to address and emphasize specific findings and arguments. TheÂ§ 103(a) Rejection of Claims 1 and 5-7 INDEPENDENT CLAIM 1 Appellants argue that the Examiner erred in rejecting claim 1 because Roberts does not teach or suggest the following limitation in claim 1: "content playing means of performing, if the user selects the viewing history information presented by the viewing history information presentation means, a playing process of content indicated by the selected viewing history information." See App. Br. 6-8; Reply Br. 2. Specifically, Appellants assert that the disputed limitation in claim 1 requires performing "a playing process of content" when "a user selects the viewing history information." App. Br. 6, 8; see Reply Br. 2. Appellants then contend that "Roberts does not meet the plain language of the claim" because ( 1) Roberts only "gives the user the eventual ability to play" a program selected for future recording and (2) "there is no guarantee that the user will watch the recorded program." App. Br. 7. According to Appellants, "the prior art cited by the Examiner at most teaches that if the selection is made by a user, 4 Appeal 2018-003317 Application 14/117 ,891 a recording screen is presented to the user, not a playing process." Reply Br. 2. Appellants' arguments do not persuade us of Examiner error because the Examiner correctly finds that Roberts and Sakai each disclose "displaying a viewing history of other users related to the user and accessing/playing content viewed by the other users." Ans. 7. In particular, Roberts describes a system that provides a user with an interactive program guide displaying viewing-history information for "friends" or related users. Roberts ,r,r 40-43, Fig. 4; see id. ,r,r 11-12, 17-19, 30; see also Final Act. 7. Roberts' Figure 4 (reproduced below) depicts an interactive program guide: User Axis 404 Program Guide Main Menu Find Friend Remove Friend J_Time Axis 412-1 406 r - - 9:oo - - - - - -~ 9:30 I I I I I Jim I I NBA Tonight 12-2 ;-410 Larry King Live 10:00 I 1 Sally I MLB: SF Giants vs. LA Dodgers Sportscenter 1 Bob I I 1 Larry Battlestar Galactica The Three Amigos 12-3 Lost late Night News Star Trek ' f----~---------~--------1 Betty Barney Sesame Street Pebbles 402 Fig. 4 400 408-2 408-3 408-4 408-5 Figure 4 (reproduced above) "shows an exemplary program guide view 400" with "a matrix of cells ( e.g., cell 402) arranged relative to a navigable user axis 404 and a time axis 406." Roberts ,r 37. 5 Appeal 2018-003317 Application 14/117 ,891 Roberts explains that "program guide view 400 may include a current time indicator 410 configured to graphically indicate a current time." Roberts ,r 41. Roberts also explains that a user "may access program guide view 400 to readily determine what" related users "are currently accessing ( e.g., watching and/or recording)" and "may also readily determine which media content instance( s) each of the [ related] users accessed prior to the current time indicated by current time indicator 410." Id. Moreover, a user may "access additional information or content associated with a particular media content instance included in the program guide" by "select[ing] a cell corresponding to the particular media content instance." Id. ,r 42. The "additional information or content" selected by a user may include a synopsis or review of the selected content. Id. ,r 43. Providing a synopsis or review of the selected content satisfies claim 1 's requirement for performing "a playing process of content" when "a user selects the viewing history information." "[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification." In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). As the Examiner correctly observes, claim 1 does not require "a playing process of the content." See Final Act. 15-16. In addition, Sakai teaches or suggests the disputed limitation in claim 1. See Adv. Act. 2; Ans. 4. Like Roberts, Sakai describes a system that provides a user with an interactive program guide displaying viewing- history information for "friends" or related users. Sakai ,r,r 16, 59, 185, 187, 197-198, 212-215, Figs. 27-33; see Final Act. 6-7, 12-13. With Sakai's program guide, a user "can easily know viewing information of other [related] users about present, past, and future content by looking at a 6 Appeal 2018-003317 Application 14/117 ,891 program guide to which such viewing information of other users is added so that the user can easily and aptly select content the user himself (herself) desires to view." Sakai ,r,r 185, 215. Further, "if other users who are friends of the user A are viewing content of a channel different from that of the user A, an opportunity is given to the user A to switch the channel to view the same content as" a friend. Id. ,r 198. Switching the channel to view the same content as a friend satisfies claim 1 's requirement for performing "a playing process of content" when "a user selects the viewing history information." See Adv. Act. 2; Ans. 4. Appellants' arguments make no attempt to distinguish claim 1 from Sakai because the arguments address only Roberts. See App. Br. 6-8; Reply Br. 2. For the reasons discussed above, Sakai and Roberts individually and collectively teach or suggest the disputed limitation in claim 1. See Final Act. 6-7; Adv. Act. 2; Ans. 4--6; Sakai ,r,r 16, 59, 185, 187, 197-198, 212-215, Figs. 27-33; Roberts ,r,r 30, 40-43, Figs. 4--5. Appellants' arguments have not persuaded us that the Examiner erred in rejecting claim 1 underÂ§ 103(a). Thus, we sustain theÂ§ 103(a) rejection of claim 1. INDEPENDENT CLAIMS 5-7 Appellants do not argue patentability separately for independent claims 5-7. App. Br. 6-10; Reply Br. 2--4. Thus, we sustain theÂ§ 103(a) rejection of these independent claims for the same reasons as claim 1. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). 7 Appeal 2018-003317 Application 14/117 ,891 TheÂ§ 103(a) Rejection of Claim 2 Claim 2 depends from claim 1 and reads as follows: 2. The content player of claim 1, wherein the viewing history information includes interruption state information indicating a content playing state at the time of interruption if the playing of content by the different content player is interrupted, and the content playing means starts the playing of the content from a state determined in accordance with the interruption state information included in the selected viewing history information. App. Br. 11 (Claims App.). Appellants argue that the Examiner erred in rejecting claim 2 because the Examiner's rationale for combining Kakumu's teachings with the teachings of Sakai and Roberts rests on hindsight. See App. Br. 8-9; Reply Br. 3. Specifically, Appellants assert that "the Examiner has used the exact rationale explained in Appellants' specification to combine the references." App. Br. 8. Appellants also assert that "[t]he prior art provides no rationale or basis, at all, for the combination." Id. Appellants' arguments do not persuade us of Examiner error because Kakumu discloses that some DVD players "stor[ e] the point where reproduction of picture contents is stopped, so that the play of the contents, when reproduced the next time, is resumed from that previous point" to avoid "inconvenient for users to have to search for the play point reached previously." Kakumu ,r 3; see Final Act. 11 (citing Kakumu ,r 3). Avoiding "inconvenient for users" constitutes a reason that would have prompted an ordinarily skilled artisan to combine Kakumu's teachings with the teachings of Sakai and Roberts. "[T]he law does not require that the references be 8 Appeal 2018-003317 Application 14/117 ,891 combined for the reasons contemplated by the inventor." In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1371 (Fed. Cir. 2017). "[A]nyneed or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining" references. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Appellants contend that Kakumu stores pause points for a user but does not store pause points for related users. App. Br. 8-9; see Reply Br. 3. That contention attacks Kakumu individually. The Examiner relies on the combined disclosures in Sakai, Roberts, and Kakumu to reject claim 2. See Final Act. 5-8, 10-11; Ans. 4--7. Where a rejection rests on the combined disclosures in the references, an appellant cannot establish nonobviousness by attacking the references individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). As discussed above, the Examiner correctly finds that Roberts and Sakai each disclose "displaying a viewing history of other users related to the user and accessing/playing content viewed by the other users." Ans. 7. Further, the Examiner correctly finds that Kakumu discloses "playing content at a point determined by interruption state information of a user." Id. Thus, the combined disclosures in Sakai, Roberts, and Kakumu teach or suggest claim 2's subject matter. Additionally, in the Answer, the Examiner identifies U.S. Patent Application Publication US 2005/0166258 Al to Vasilevsky et al. ("V asilevsky") as disclosing stored video bookmarks (pause points) for not only a user but also for related users. Ans. 7; see Vasilevsky ,r,r 52, 58, 9 Appeal 2018-003317 Application 14/117 ,891 Fig. 7. In the Reply Brief, Appellants do not address Vasilevsky. See Reply Br. 2--4. Hence, Appellants' arguments have not persuaded us that the Examiner erred in rejecting claim 2 underÂ§ 103(a). Thus, we sustain the Â§ 103(a) rejection of claim 2. TheÂ§ 103(a) Rejection of Claim 4 Claim 4 depends from claim 3. Claims 3 and 4 read as follows: 3. The content player of claim 1, wherein the viewing history information includes information about a joint viewing user who, together with the related user using the different content player, viewed content played by the different content player, and the viewing history information presentation means presents, to the user, information included in the viewing history information and indicating the joint viewing user who viewed the content together with the related user. 4. The content player of claim 3, wherein the viewing history information further includes viewing type information indicating in which mode the joint viewing user viewed the content together with the related user, wherein the mode is selected from an offline type joint viewing mode and an online type joint viewing mode, and the viewing history information presentation means presents, to the user, in which mode the joint viewing user viewed the content together with the related user, in accordance with the viewing type information. App. Br. 11-12 (Claims App.). Appellants argue that the Examiner erred in rejecting claim 4 because (1) "the Examiner considers in-person attendees to a meeting as being in an offline mode and remote users as being in an online mode" and (2) "[t]his is the exact opposite meaning of the modes as defined in the specification." 10 Appeal 2018-003317 Application 14/117 ,891 App. Br. 9. Appellants assert that "the specification provides a definition as to what is meant by offline mode and online mode and the citation provided by the Examiner utilizes the exact opposite definitions." Id. Appellants' arguments do not persuade us of Examiner error because the Examiner's analysis of an offline mode and an online mode comports with the Specification. See Final Act. 12-13; Ans. 7-8. The Specification explains the difference between an offline mode and an online mode as follows: The present embodiment assumes that a joint viewing user views content together with the authenticated user in one of two modes. In the first mode, the joint viewing user visits, for example, his or her friend's house so that the authenticated user and joint viewing user view the content using the single content player 10 owned by the authenticated user at the same place together. In the description given below, joint viewing in this mode will be referred to as offline type joint viewing. In the second mode, on the other hand, the content delivery server 30 delivers content simultaneously in real time to each of the plurality of content players 10 as described above ... so that the authenticated user and joint viewing user view the content simultaneously with their own content players 10. In the description given below, joint viewing in this mode will be referred to as online type joint viewing. Spec. ,r 48. Consistent with the Specification, the Examiner "interprets 'offline type joint viewing mode' as a meeting that comprises people meeting face- to-face or in-person while 'online type joint viewing mode' is a meeting that is conducted purely using computers remotely communicating with each other." Ans. 7; see Final Act. 13. Further, the Examiner correctly finds that Ashutosh discloses a display showing participant-presence information and identifying participants who attended a meeting in person ("offline type joint 11 Appeal 2018-003317 Application 14/117 ,891 viewing mode") as well as participants who attended remotely using computers ("online type joint viewing mode"). Ans. 8; see Final Act. 13; Ashutosh ,r,r 3, 14, 33, 68, 71, 73, Fig. 3. For example, Ashutosh describes a "multimedia conference event," such as a "web conferenc[ e] or live meeting," with some participants "present in the conference room," and participant-presence information displayed for the "presenters or other attendees of the online meeting." Ashutosh ,r,r 33, 71. Ashutosh explains that the participant-presence information "for different presenters and attendees of the multimedia conference event" may "change as the status of the various entities change ( e.g., online, away, busy, office, home, etc.)." Id. ,r 73. Appellants do not address Ashutosh's disclosure. See App. Br. 8-9; Reply Br. 2--4. Hence, Appellants' arguments have not persuaded us that the Examiner erred in rejecting claim 4 underÂ§ 103(a). Thus, we sustain the Â§ 103(a) rejection of claim 4. TheÂ§ 103(a) Rejections of Claims 3 and 8 Claims 3 and 8 depend from claim 1. Appellants do not argue patentability separately for these dependent claims. App. Br. 6-10; Reply Br. 2--4. Thus, we sustain theÂ§ 103(a) rejections of these dependent claims for the same reasons as claim 1. See 37 C.F .R. Â§ 41.37 ( c )(1 )(iv). DECISION We affirm the Examiner's decision to reject claims 1-8. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). See 37 C.F.R. Â§ 4I.50(f). 12 Appeal 2018-003317 Application 14/117 ,891 AFFIRMED 13