Ex Parte Locker et al

Patent Trial and Appeal Board

Jun 12, 2017

12463020 (P.T.A.B. Jun. 12, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/463,020 05/08/2009 Howard Locker RPS920090015USNP(710.114) 8696
58127 7590 06/12/2017
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
KURIEN, CHRISTEN A
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
06/12/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD LOCKER, ROBERT D. DICKINSON III,
BLAKE C. RAMSDELL, and MICHAEL SIEVERT
Appeal 2017-001057
Application 12/463,0201
Technology Center 2400
Before JAMES R. HUGHES, LARRY J. HUME, and JOYCE CRAIG,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, 8—11, 13—15, and 21—27. Appellants have canceled
claims 3—7, 12, and 16—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Lenovo (Singapore)
PTE, LTD. App. Br. 3.
Appeal 2017-001057
Application 12/463,020
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions are "directed to systems,
methods and apparatuses for managing multimedia data. More specifically,
the invention is directed to systems, methods and apparatuses that provide
identification and selective combined display of a plurality of media data."
Spec. 1,11.7-10.
Exemplary Claims
Claims 1, 2, 8, 9, and 27, reproduced below, are representative of the
subject matter on appeal (emphasis added to contested limitations):
1. An apparatus comprising:
one or more processors; and
a program storage device that stores a program of
instructions that when executed by the one or more processors
enable the apparatus to:
receive at the apparatus component media
content;
buffer a frame of displayable video
information from the component media content at
the apparatus;
provide at least a portion of the buffered
frame for title identification of the component
media content;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Nov. 17, 2015); Reply Brief ("Reply Br.," filed Oct. 24, 2016); Examiner's
Answer ("Ans.," mailed Aug. 24, 2016); Final Office Action ("Final Act.,"
mailed June 17, 2015); and the original Specification ("Spec.," filed
May 8, 2009).
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use the title identification to search for
related media content;
obtain the related media content based upon
title identification of the component media content
using the buffered frame of displayable video
information; and
provide one or more instructions relating to
combined display of the component media content
and related media content.
2. The apparatus according to claim 1, further
comprising:
a system that selectively modifies the component media
content according to the one or more instructions, wherein the
one or more instructions comprises an instruction indicating
scaling for the component media content and the related media
content, an instruction indicating rotation for the component
media content and the related media content, and a four comers
instmction indicating a location within an output frame for at
least one of the component media content and the related media
content; and
an overlay pass through device that constructs an output
frame for display on a display device, wherein the output frame
is constructed according to the one or more instructions.
8. The apparatus according to claim 2, wherein the
overlay pass through device performs on chip title
identification of the component media content.
9. The apparatus according to claim 2, wherein the
one or more instructions further enables selective display in a
first pass through mode wherein only the component media
content is displayed.
27. The computer implemented method of claim 26,
wherein the extracting comprises optical character recognition.
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Shoffet al. ("Shoff')
Zimmerman
Shimizu et al. ("Shimizu")
Ohsawa et al. ("Ohsawa")
Hilton
Chen et al. ("Chen")
US 6,240,555 B1
US 2003/0208755 Al
US 6,867,787 B1
US 2007/0136804 Al
US 2007/0180461 Al
US 2008/0086754 Al
May 29, 2001
Nov. 6, 2003
Mar. 15,2005
June 14, 2007
Aug. 2, 2007
Apr. 10, 2008
Rejections on Appeal
R1. Claim 27 stands rejected under 35U.S.C. § 112, first paragraph,
as lacking written description support. Final Act. 2.
R2. Claims 1, 13, 14, 23, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Hilton and Shimizu.
Final Act. 3.
R3. Claims 2, 9-11, 15, 22, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Hilton, Shimizu, and
Shoff. Final Act. 5.
R4. Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hilton, Shimizu, and Chen. Final
Act. 8.
R5. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hilton, Shimizu, Chen, and
Zimmerman. Id.
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R6. Claims 8 and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hilton, Shimizu, Shoff, and
Ohsawa. Final Act. 9.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 21—29), we decide written
description Rejection R1 of claim 27, infra', we decide obviousness
Rejection R2 of claims 1, 13, 14, 23, and 24 on the basis of representative
claim 1; we decide obviousness Rejection R3 of dependent claims 2 and 15
on the basis of representative claim 2; we decide obviousness Rejection R3
of claims 9-11, 22, and 25 on the basis of representative claim 9; and we
decide obviousness Rejection R6 of claims 8 and 21 on the basis of
representative claim 8.
Remaining claims 26 and 27 in Rejections R4 and R5, not argued
separately or substantively, stand or fall with independent claim 14 from
which they depend.3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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We disagree with Appellants' arguments with respect to claims 1, 2,
8—11, 13—15, and 21—27, and we incorporate herein and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken, and (2) the reasons and rebuttals set forth in the
Examiner's Answer in response to Appellants' arguments. We incorporate
such findings, reasons, and rebuttals herein by reference unless otherwise
noted. However, we highlight and address specific findings and arguments
regarding claims 1, 2, 8, 9, and 27 for emphasis as follows.
1. $11211, Written Description Rejection R1 of Claim 27
Issue 1
Appellants argue (App. Br. 28—29; Reply Br. 30-31) the Examiner's
rejection of claim 27 under 35 U.S.C. § 112, first paragraph, as lacking
written description support is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the originally filed disclosure does not
provide written description support for the recited step of "extracting [closed
caption data]" by use of "optical character recognition," as recited in
claim 27?
Analysis
Appellants contend "[w]hile the language 'optical character
recognition' is not expressly used within the specification, the claim
limitation does not have to be expressly supported within the originally filed
disclosure." App. Br. 28. "Additionally, the specification discloses that
identification can be provided 'via several techniques, including
identification from program guide information, closed captioning or meta
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data associated with the media stream.'" Id. Appellants further argue,
without citing to any evidence of record, "[a]s is known in the art, one
method of identifying key characters or closed captioning data is through the
use of optical character recognition." Id.
The Examiner finds,
Appellant has clearly used the language "optical character
recognition" which is nowhere to be found in the specification
and which is a term of art. None of the cited portions of the
Appellants['] specification and nowhere else in the specification
is "optical character recognition" disclosed. Therefore,
examiner stands by the 112 rejection of claim 27.
Ans. 5.
First, we are unpersuaded by Appellants' contentions because attorney
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984).4
Moreover, written description is a question of fact, judged from the
perspective of one of ordinary skill in the art as of the relevant filing date.
See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991).
The written description "must clearly allow persons of ordinary skill in the
art to recognize that [the inventor] invented what is claimed." Ariad Pharm.,
Inc. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
(alteration in original) (citation and quotations omitted). The test is whether
4 "Argument in the brief does not take the place of evidence in the record."
In re Schulze, 346 F.2d 600, 602 (CCPA 1965) (citing In re Cole, 326 F.2d
769, 773 (CCPA 1964)).
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the disclosure "conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Id.
Our reviewing court clarifies
it is "not a question of whether one skilled in the art might be
able to construct the patentee's device from the teachings of the
disclosure .... Rather, it is a question whether the application
necessarily discloses that particular device." ... A description
which renders obvious the invention for which an earlier filing
date is sought is not sufficient.
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)
(second and third emphasis added) (quoting Jepson v. Coleman, 314 F.2d
533, 536 (CCPA 1963)). See also AriadPharm, 598 F.3d at 1352 ("[W]e
have repeatedly stated that actual 'possession' or reduction to practice outside
of the specification is not enough. Rather ... it is the specification itself that
must demonstrate possession.").
In agreement with the Examiner, we find the originally filed
disclosure does not explicitly, implicitly, or inherently disclose "extracting
closed caption data from ... a frame of displayable video information for
title identification" (claim 26), "wherein the extracting comprises optical
character recognition," as recited in claim 27.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's finding that claim 27 lacks sufficient
written description support under § 112, first paragraph, such that we sustain
the Examiner's written description Rejection R1 of dependent claim 27.
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2. $103 Rejection R2 of Claims 1, 13, 14, 23, and 24
Issue 2
Appellants argue (App. Br. 21—23; Reply Br. 22—25) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Hilton and Shimizu is in error. These contentions present us
with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests an apparatus that includes "a program of instructions that
when executed by the one or more processors enable the apparatus to," inter
alia, "provide at least a portion of the buffered frame for title identification
of the component media content; use the title identification to search for
related media content; [and] obtain the related media content based upon
title identification of the component media content," as recited in claim 1?
(b) Did the Examiner err in finding the cited prior art combination
teaches or suggests the apparatus of claim 1 because the Examiner's stated
motivational basis for combining Hilton with Shimizu was deficient?
Analysis
Issue 2(a) —All limitations are Taught or Suggested
Appellants contend "[t]he Office alleges that Hilton teaches title
identification," and "the system of Hilton does not identify the content using
title identification, as per Claim 1." App. Br. 21.
We disagree with Appellants' allegations, which we find are not
responsive to the Examiner's specific findings, because the Examiner relies
upon Hilton for teaching using an identification tag to search for related
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media content (Final Act. 3—A\ Ans. 3), and cites Shimizu for the limited
purpose of teaching or suggesting the use of title information to identify
content, such that the combination of Hilton and Shimizu teaches or suggests
the contested limitation. Final Act. 4; Ans. 3.
Appellants make further arguments in the Reply Brief, which we do
not find persuasive of error on the part of the Examiner because Appellants
continue to respond to the rejection by attacking the references separately,
even though the rejection is based on the combined teachings of the
references. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
We agree with the Examiner's findings because, as noted above, the
test for obviousness is what the combined teachings of the prior art would
have suggested to the hypothetical person of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
Issue 2(b) — The Examiner's Motivation to Combine was Proper
Appellants contend
one of ordinary skill in the art would [not] be motivated to
combine Hilton and Shimizu, particularly for the reason alleged
by the Office . . . [because] Hilton is directed toward the field of
providing media content associated with integrated video
content, while Shimizu is directed toward the wholly unrelated
field of character generation.
App. Br. 22 (citation omitted). Appellants further allege the Examiner
"failed to clearly articulate the rationale to support why one skilled in the art
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would combine the teachings of Hilton and Shimizu," as required by the
MPEP. Id.
We disagree with Appellants' argument, and note the relevant inquiry
is whether the Examiner has set forth "some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int'l
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).
The Examiner finds, "[a]t the time of the invention it would have been
obvious to one of ordinary skill in the art to modify the teachings of Hilton
with Shimizu. The suggestion/motivation would be for improved
operability." Final Act. 4.
While Appellants may disagree with the Examiner's findings, the
Examiner's findings are far from "failing" to clearly articulate the rationale
to support why one skilled in the art would combine the teachings of Hilton
and Shimizu. On this record, and in accordance with KSR, we find this
motivational statement meets the articulated reasoning and rational
underpinning requirements.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 13, 14, 23, and 24 which fall therewith. We also sustain the
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Examiner’s obviousness rejections of claims 26 and 27, which depend from
claim 14. See Claim Grouping, supra.
3. $103 Rejection R3 of Claims 2 and 15
Issue 3
Appellants argue (App. Br. 24—25; Reply Br. 25—27) the Examiner's
rejection of claim 2 under 35 U.S.C. § 103(a) as being obvious over the
combination of Hilton, Shimizu, and Shoff is in error. These contentions
present us with the following issues:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the apparatus of claim 1 having "a system that selectively
modifies the component media content according to . . . one or more
instructions" wherein, inter alia,
(a) "the one or more instructions comprises ... an instruction
indicating rotation for the component media content," and wherein the
system further includes
(b) "an overlay pass through device that constructs an output frame for
display on a display device, wherein the output frame is constructed
according to the one or more instructions," as recited in claim 2?
Analysis
Appellants generally contend Shoff fails to make up for the alleged
deficiencies of Hilton and Shimizu with respect to the rejection of claim 1,
supra. App. Br. 24.
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Issue 3(a) — Instruction Indicating Rotation is Taught
Appellants specifically contend Shimizu fails to teach or suggest
contested limitation (a) because "Shimizu does not disclose manipulation of
component media content and related media content. Therefore, the
teachings of Shimizu do not teach 'an instruction indicating rotation for the
component media content and the related media content.'" App. Br. 24.
Instead, Appellants allege "Shimizu teaches that a user can rotate or
otherwise manipulate the three-dimensional character already displayed on
the screen." Id.
The Examiner finds (Final Act. 5) the combination of Hilton with
Shimizu teaches or at least suggests the contested limitation:
Under this state, in the GUI screen 60, when the user clicks a
rotation axis switch 69, any one of the X-axis, the Y-axis and
the Z-axis is selected as a coordinate axis to be used as a central
axis for a rotational moving operation.
After that, in the GUI screen 60, by the drag operation of
the user, the rotating movement can be performed in the virtual
three-dimensional space area. In such a rotational movement
operation, as well as the above described parallel movement
operation, a changed result is displayed on the scene window 62
in real time without waiting the rendering processing, so that a
desired moving operation can be rapidly and precisely carried
out.
Shimizu, col. 7,11. 15—30. In agreement with the Examiner, we find this
disclosure of Shimizu teaches or at least suggests "an instruction indicating
rotation for the component media content and the related media content," as
recited in claim 2.
In the Reply Brief, Appellants disagree with the Examiner's findings
by arguing, "Shimizu teaches that a user can rotate or otherwise manipulate
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the three-dimensional character already displayed on the screen[, but]
Shimizu does not disclose manipulation of component media content and
related media content," as claimed. Reply Br. 26 (citation omitted).
We disagree with Appellants' argument because, as cited above, the
test for obviousness is what the combined teachings of the prior art would
have suggested to the hypothetical person of ordinary skill in the art. See
Keller, 642 F.2d at 425. Under a broad but reasonable interpretation,5 we
find the recited "component media content" reads on Hilton's video content
as stated in connection with the rejection of claim 1. We further find the
Examiner's proposed combinations for claim 2 applies the specific teaching
of Shimizu to rotate generated characters in a manner that would produce
predictable results when used with the combined teachings of Hilton and
Shoff, i.e., Shimizu's teaching of rotation of a generated character represents
the use of known elements to produce predictable results,6 and could be
5 We give the claim its broadest reasonable interpretation consistent with
the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
6 "The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results."
KSR, 550 U.S. at 416.
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
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applied by a skilled artisan to the teachings of Hilton. Moreover, Appellants
have presented no evidence that combining the component media content
teaching of Hilton with the character rotation of Shimizu was "uniquely
challenging or difficult for one of ordinary skill in the art" or "represented an
unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Accordingly, we are not persuaded the Examiner erred in finding the
reference combination teaches or suggests the recited rotation instruction.
Issue 3 (b) — Overlay Pass Through Device is Taught
Appellants contend, "Shoff fails to teach 'an overlay pass through
device that constructs an output frame for display on a display device,
wherein the output frame is constructed according to the one or more
instructions.'" App. Br. 24. Specifically, Appellants contend,
In the system of Shoff, on the other hand, the display layout
instructions are embedded within the digital data provided by a
target resource. In other words, the digital data provided by the
target resource delineate the layout and presentation of the
interactive content. This is in contrast to [the recited
limitation],
App. Br. 25 (citation omitted).
This contested limitation of claim 2 recites "an overlay pass through
device that constructs an output frame for display on a display device,
wherein the output frame is constructed according to the one or more
instructions."
Id. at 417.
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In response to Appellants' argument, the Examiner finds, "Shoff
clearly teaches objects being overlaid onto a frame, specifically icons, icons
are overlaid on the playing video program, See Fig. 6, and Col 9,11. 30-40.
Therefore, examiner does not find it unreasonable to conclude that claim 2 is
taught by the combination of references." Ans. 3—4. We agree with the
Examiner because Appellants have not cited to a definition of "overlay pass
through device" in the Specification that would preclude the Examiner's
broader reading.7 Id.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 2, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 2, and grouped
claim 15, which falls therewith. See Claim Grouping, supra.
4. $103 Rejection R3 of Claims 9—1E 22, and 25
Issue 4
Appellants argue (App. Br. 24—25; Reply Br. 25—27) the Examiner's
rejection of claim 9 under 35 U.S.C. § 103(a) as being obvious over the
7 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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combination of Hilton, Shimizu, and Shoff is in error. These contentions
present us with the following issues:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the apparatus of claim 2, "wherein the one or more instructions
further enables selective display in a first pass through mode wherein only
the component media content is displayed," as recited in claim 9?
Analysis
Appellants contend the Examiner erred in rejecting claim 9 (App.
Br. 25) because the Examiner stated, in a manner that might at first glance
be considered inconsistent with the explicit statement of the rejection, "[a]s
to claim 9, Hilton teaches the apparatus according to claim 2." Final Act. 6.8
In response, the Examiner clarifies the rejecting by stating, "the
references [Hilton, Shimizu, and Shoff] used to reject claim 2 and 15 are
applied to claim 9-11, 22, and 25. Therefore please see the response to
arguments above for claims 2 and 15." Ans. 4.
Although perhaps inarticulately stated by use of a shorthand
statement, we understand the Examiner's rejection of claim 9 (Final
Act. 6—7) relies upon the combination of Hilton, Shimizu, and Shoff as
stated in connection with claim 2, and further relies upon Hilton at
paragraph 49 as teaching or suggesting the contested limitation of claim 9.
In the Reply Brief, Appellants argue
the rejections of claims 9—11, 22, and 25 state that Hilton
teaches the apparatus according to claim 2 . . . [but] respectfully
8 Claim 9 is stated as being unpatentable under § 103 over the combination
of Hilton, Shimizu, and Shoff. Final Act. 5.
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submit that claims 2 and 15 are rejected by Hilton in view of
Shimizu and in further view of Shoff. Thus, Hilton cannot
teach the apparatus according to claim 2 as stated in the Final
Office Action at pp. 6—7.
Reply Br. 27 (citation omitted).
We note Appellants do not respond to the unchanged basic thrust of
the rejection as clarified by the Examiner on page 4 of the Answer, i.e., the
specific contested limitation of claim 9 is taught or suggested by
paragraph 49 of Hilton, and the combination of Hilton, Shimizu, and Shoff is
relied upon as teaching or suggesting the limitations of claim 2, from which
claim 9 depends.
Thus, particularly in view of the Examiner's clarification, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 9, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 9, and grouped
claims 10, 11, 22, and 25, which fall therewith. See Claim Grouping, supra.
5. $103 Rejection R6 of Claims 8 and 21
Issue 5
Appellants argue (App. Br. 26—28; Reply Br. 28—30) the Examiner's
rejection of claim 8 under 35 U.S.C. § 103(a) as being obvious over the
combination of Hilton, Shimizu, and Ohsawa is in error. These contentions
present us with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests the apparatus of claim 2, "wherein the overlay pass
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through device performs on chip title identification of the component media
content," as recited in claim 8?
(b) Did the Examiner err in finding the cited prior art combination
teaches or suggests the apparatus of claim 8 because a person of ordinary
skill in the art would not be motivated to combine Hilton and Ohsawa in the
manner suggested?
Analysis
Issue 5(a) —All limitations are Taught or Suggested
Similar to the potentially confusing statement of the rejection of
claim 9, supra, Appellants contend the Examiner erred in rejecting claim 8
(App. Br. 26—28) because
[Cjlaims 1 and 14 are rejected over Hilton in view of Shimizu.
Additionally, within the rejection of claim 8, the Office
references Shimizu as teaching the title identification claim
limitation .... [and] claim 8 is dependent on claim 2, which is
rejected over Hilton in view of Shimizu and in further view of
Shoff, and are not rejected over Hilton in further view of
Ohsawa. Therefore, Applicants respectfully submit that it is not
clear how claims 8 and 21 are rejected using the references
listed on p. 9 of the final Office Action, or why a specific
combination of references is being made and considered by the
Office as obvious.
App. Br. 26 (citation omitted).
In the Final Action, the Examiner stated "[cjlaims 8 and 21 are
rejected under 35 U.S.C. 103(a) as being unpatentable over Hilton as applied
to claims 1 and 14 above, and further in view of. . . Ohsawa .... As to
claim 8, Hilton teaches the apparatus according to claim 2." Final Act. 9.
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While this may appear to be confusing, the Examiner clarifies the
rejection in the Answer by stating:
Claim 8 and 21 are dependent on claim 2 and 15, which [are]
dependent on claim 1 and 14, therefore the combination of all
the references combined may be used to teach such a dependent
claim. For the limitation in claim 8 and 21, Ohsawa is used to
teach wherein the microcontroller subsystem is configured to
perform on chip identification of the component media content
(10077, chip identification of media). Examiner believes that
this is clear from the rejection and does not find it unreasonable
to conclude that claim 8 and 21 are taught by the combination
of references.
Ans. 4. Similar to the situation with respect to the rejection of claim 9,
supra, we understand and agree with the Examiner's statement of the
rejection of claim 8.
In spite of the Examiner's clarification, Appellants "respectfully
submit that it is not clear how claims 8 and 21 are rejected using the
references listed on p. 9 of the final Office Action, or why a specific
combination of references is being made and considered by the Office as
obvious." Reply Br. 29.
We disagree with Appellants' contentions, and reiterate that claim 2,
from which claim 8 depends, is rejected under § 103 over the combination of
Hilton, Shimizu, and Shoff (Final Act. 5), and claim 8, depending from
claim 2, is further rejected under § 103 over the combination of Hilton,
Shimizu, Shoff, and Ohsawa. Final Act. 9; Ans. 4. We find Appellants'
arguments with respect to claim 8 are not responsive to the Examiner's
specific findings and legal conclusions.
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Application 12/463,020
Issue 5(b) — The Examiner's Motivation to Combine was Proper
Applicants respectfully disagree that one of ordinary skill
in the art would be motivated to combine Hilton and Ohsawa
particularly for the reason alleged by the Office. See Final
Office Action at p. 9. Specifically, Hilton is directed toward the
field of providing media content associated with integrated
video content, while Ohsawa is directed toward the wholly
unrelated field of authentication security. See Ohsawa at
[0009]—[0010]. Applicants respectfully submit that the Office
has failed to clearly articulate the rationale to support why one
skilled in the art would combine the teachings of the references,
particularly Hilton and Ohsawa, as is required ....
Reply Br. 29.
As for claim 8, the Examiner finds Hilton does not teach the
"microcontroller subsystem is configured to perform on chip identification
of the component media content. . . [but] Ohsawa . . . teaches wherein the
microcontroller subsystem is configured to perform on chip identification of
the component media content (|0077, chip identification of media)." Final
Act. 9 (citations omitted).
Further, with respect to the stated motivational basis to combine
Hilton, Shimizu, and Shoff with Ohsawa, the Examiner finds "[a]t the time
of the invention it would have been obvious to one of ordinary skill in the art
to modify the teachings of Hilton with Ohsawa. The suggestion/motivation
would be to store the information of the media." Id. We find this stated
rationale is clearly stated and meets the requirements of KSR, as set forth
above.
As for Appellants' suggestion that the different technical thrusts of
Hilton and Ohsawa purportedly do not support their combination, we note,
"[i]n determining whether the subject matter of a patent claim is obvious,
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Appeal 2017-001057
Application 12/463,020
neither the particular motivation nor the avowed purpose of the patentee
controls." KSR, 550 U.S. at 419. Further, as our reviewing court has held,
"[a]s long as some motivation or suggestion to combine the references is
provided by the prior art taken as a whole, the law does not require that the
references be combined for the reasons contemplated by the inventor." In re
Beattie, 91A F.2d 1309, 1312 (Fed. Cir. 1992). Accordingly, Appellants'
arguments that the references cannot be combined because Hilton and
Ohsawa address different problems in the art are not persuasive.
Thus, particularly in view of the Examiner's clarification, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 8, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 8, and grouped
claim 21, which falls therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 22—31) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see
37 C.F.R. § 41.41(b)(2)), which Appellants have not shown.
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Appeal 2017-001057
Application 12/463,020
CONCLUSIONS
(1) The Examiner did not err with respect to written description
Rejection R1 of claim 27 under 35 U.S.C. § 112, first paragraph, and we
sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 through R6 of claims 1, 2, 8—11, 13—15, and 21—27 under
35 U.S.C. § 103(a) over the cited prior art combinations of record, and we
sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 8—11, 13—15,
and 21—27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. §41.50(f).
AFFIRMED
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