Ex Parte LIM et al

Patent Trials and Appeals BoardJan 22, 2019

14527146 - (D) (P.T.A.B. Jan. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/527,146 10/29/2014 68103 7590 01/24/2019 Jefferson IP Law, LLP 1130 Connecticut Ave., NW, Suite 420 Washington, DC 20036 FIRST NAMED INVENTOR Chae-Whan LIM 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. 0201-0417-5 2197 EXAMINER CORBO, NICHOLAS T ART UNIT PAPER NUMBER 2424 NOTIFICATION DATE DELIVERY MODE 01/24/2019 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): usdocketing@jeffersonip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHAE-WHAN LIM and HYUN-JUNG KIM Appeal2018-005102 Application 14/527,146 1 Technology Center 2400 Before DAVID M. KOHUT, ERIC B. CHEN, and MATTHEW R. CLEMENTS, Administrative Patent Judges. CLEMENTS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-3, 5-12, and 14--24. Claims 4 and 13 are canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Appellants identify the real party in interest as "Samsung Electronics Co., Ltd." App. Br. 2. Appeal2018-005102 Application 14/527, 146 STATEMENT OF THE CASE The present invention is a media device that receives media and command data from a wireless terminal ( e.g., cellphone), decodes the media data in accordance with the command data, and outputs the decoded media data to a connected display device ( e.g., television) for reproduction. Spec. 2:20-30, 4:14--5:14, Fig. 1. Claims 1, 11, 16, and 18 are independent. Claim 1 is illustrative ( disputed limitations in italics). 1. An apparatus comprising: a transceiver configured to communicate with a first electronic device; and a control unit operatively coupled with the transceiver, the control unit configured to: receive, from the first electronic device via the transceiver, information corresponding to a playback location of multimedia data being presented at the first electronic device, the multimedia data to be presented at a second electronic device operatively coupled with the apparatus, based at least in part on the information; receive,from the first electronic device via the transceiver, at least one portion of the multimedia data being presented at the first electronic device; and transmit, to the second electronic device based at least in part on the information, the at least one portion of the multimedia data. App. Br. 11 (Claims App.). 2 Appeal2018-005102 Application 14/527, 146 THE REJECTIONS Claims 1, 2, 5, 6, 8, 10-12, 14--16, 18, and 19--23 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Rakib (US 2002/0044225 Al; Apr. 18, 2002), Palin (EP 1 180 903 Al; Feb. 20, 2002), and Bell (WO 2004/032507 Al; April 15, 2004). Final Act. (May 3, 2017) 5-14. Claims 3, 7, and 17 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Rakib, Bell, Palin, and Lee (US 2002/0062313 Al; May 23, 2002). Final Act. 14--15. Claim 9 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Rakib, Bell, Palin, and Ciciora (US 5,815,297; Sept. 29, 1998). Final Act. 16-17. Claim 24 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Rakib, Bell, Palin, and Admitted Prior Art. Final Act. 17-18. ISSUES (1) UnderÂ§ I03(a), has the Examiner erred in proposing a modification of Rakib's invention in view of Palin? (2) Has the Examiner erred in finding that Palin teaches "receive, from the first electronic device via the transceiver, at least one portion of the multimedia data being presented as the first electronic device," as recited in claim 1? ANALYSIS Reason to Combine Appellants argue, and we are persuaded, that the Examiner presents an insufficient rationale to modify Rakib' s invention in view of Palin. All 3 Appeal2018-005102 Application 14/527, 146 claims are rejected over this modification. We explain the Examiner's error with reference to claim 1. The apparatus of claim 1 includes a transceiver and control unit that relay multimedia data from a first device to a second device. Specifically, the transceiver relays multimedia data of the first device to the control unit, which then relays the multimedia data to the second device. The Examiner finds that the recited transceiver, control unit, first device, and second device are taught by Rakib's transceiver (128), gateway (112, 116, 118),2 remote control device (100) having a media display (herein "remote"), 3 and television (128), 4 respectively. Final Act. 6-7; Ans. 3; see also Rakib' s Fig. 7. The Examiner acknowledges that "Rakib in view of Bell is unclear as to at least one portion of the multimedia data is received from the first electronic device." Final Act. 8. The Examiner then finds Palin teaches transmitting multimedia data from wireless terminal 20 to 2 The Examiner maps the claimed control unit to Rakib 's operating system 116 and CPU 118, which cannot alone teach the claimed control unit because they 116, 118 do not actually receive the multimedia data. Rather, 116, 118 operate switch 112 which receives and then passes the data ( to the remote 100, television 128, and/or a hard disk 114). We consequently understand the rejection as mapping the claimed control unit to the switch 112, operating system 116, and CPU 118 (referenced herein as the "gateway"). 3 Rakib illustrates an optional media display 92 for only a remote control device 70 of Figure 4. Rakib expressly states, however, such a display can be incorporated into the remote control device 100 of Figure 3. See Rakib if 77. 4 Rakib assigns the same reference numeral, 128, to the transceiver and television. They are, however, plainly separate devices. 4 Appeal2018-005102 Application 14/527, 146 media device/TV receiver 30 over RF link 22 for output on a display. Id. The Examiner concludes that it would have been obvious to a person having ordinary skill in the art to incorporate the known technique of outputting multimedia data from a wireless terminal to be displayed on a larger external display device of Palin with the known system of Rakib in view of Bell in order to alleviate the problems that visually impaired people experience watching the limited size of the displays of mobile terminals by allowing users to enjoy watching multiformatted images/video on a larger display. Id. We do not agree with the Examiner's articulated rationale for the combination. Appellants argue that the record lacks a rational underpinning to modify Rakib such that multimedia data is transmitted from Rakib 's remote control device to Rakib's television. App. Br. 5; Reply Br. 2. Specifically, Appellants contend: [T]he gateway ... stores/processes the multimedia data that is ultimately viewed on the TV 128 .... [I]t is unclear what would motivate one of skill in the art to alter this configuration such that the multimedia data is provided from the remote controller 100 [.] There are certainly many reasons why one of skill in the art would not be motivated to change this configuration[,] including the need to dramatically increase the storage and processing capabilities of the remote controller 100 if it were relied upon for transmitting not only a control signal but also the multimedia data that was to be viewed by the TV. App. Br. 5. We agree with Appellants inasmuch as the Examiner's findings lack a sufficient explanation for why a person of ordinary skill in the art would modify Rakib. The Examiner's stated reason-to display multimedia content "on a larger external display device of Palin ... in order to alleviate 5 Appeal2018-005102 Application 14/527, 146 the problems that visually impaired people experience"- is already addressed in Rakib, which discloses television 128 on which can be shown any content that the user can view on remote control device 100 (i.e., content delivered from gateway 102). Reply Br. 2. Users could "enjoy watching multiformatted images/video on a larger display" (Final Act. 8) in Rakib without modifying Rakib at all, much less in view of Palin such that multimedia data is routed through Rakib's remote control device on its way to the larger display. We are, therefore, persuaded by Appellants' argument that the record lacks a rational underpinning to modify Rakib in view of Palin. Reliance on Palin Appellants argue, and we are persuaded, that the Examiner also erred in finding Palin teaches "receiv[ing], from the first electronic device via the transceiver, at least one portion of the multimedia data being presented at the first electronic device," as recited in claim 1. Independent claims 11, 16, and 18 recite commensurate limitations. Claim 1 specifies that "at least one portion of the multimedia data [is] presented at the first electronic device" and the relay "transmit[ s ], to the second electronic device ... the at least one portion of the multimedia data." Thus, at least a portion of multimedia data is both presented at the first device and transmitted to the second device. The Examiner finds Palin's relay of video/audio data from mobile terminal 20 to external display device 30 teaches at least one portion of multimedia data is received from the first electronic device. Final Act. 8. 6 Appeal2018-005102 Application 14/527, 146 The Examiner acknowledges that Palin's data "presented" at mobile terminal 20 (i.e., "mobile terminal part 54" of data frames 50, 52) is not the same data relayed to external display device 30, which receives only "external display device part 56" of data frames 50, 52 (Ans. 4; see also Palin ,r 23), but finds that "the broad terminology of the claims" does not require that "the identical frame or picture that is being shown on the display on the mobile terminal is to be displayed on the [ external display device] simultaneously" (id. at 5). The Examiner finds that the limitation is met by Palin's teaching that "basic information about the current weather in Helsinki ... can be displayed on the display of the mobile [] terminal 20 and pictorial data may be forwarded to the external display device, such as a television receiver, for better viewing." Ans. 5 (citing Palin ,r 35). Appellants argue that the example in paragraph 35 "is simply an example of the distinctions discussed above," i.e., between mobile phone part 54 that is presented only on mobile terminal 20 and external display device part 56 that is presented only on external display device 30. Reply Br. 3. We agree with Appellants' argument. The Examiner has not shown that Palin teaches that the data received from the first electronic device is at least a portion of "the multimedia data being presented at the first electronic device." Palin teaches that the data "being presented at" the first electronic device is only mobile terminal part 54, whereas the multimedia data being "received" from the first electronic device is only external display device part 56. The data being "received" from the first electronic device, therefore, is not "the multimedia data being presented at the first electronic 7 Appeal2018-005102 Application 14/527, 146 device," but is instead data from a separate part of data frames 50, 52. Paragraph 35 of Palin, as Appellants correctly note, merely describes an embodiment in which the data in mobile terminal part 54 conveys "basic information about the current weather in Helsinki" whereas the data in external device display part 56 conveys "pictorial data" such as "a live or satellite picture of Helsinki, a weather map, or a detailed graphical illustration of the weather forecast for Helsinki city." Palin ,r 35. Conclusion For the reasons given above, we do not sustain the rejections of claims 1-3, 5-12, and 14--24. DECISION The Examiner's decision rejecting claims 1-3, 5-12, and 14--24 is reversed. REVERSED 8