Ex Parte Locker et alDownload PDFPatent Trial and Appeal BoardJun 12, 201712463020 (P.T.A.B. Jun. 12, 2017) Copy Citation 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). 2 Appeal 2017-001057 Application 12/463,020 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. 3 Appeal 2017-001057 Application 12/463,020 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. 4 Appeal 2017-001057 Application 12/463,020 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). 5 Appeal 2017-001057 Application 12/463,020 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 6 Appeal 2017-001057 Application 12/463,020 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)). 7 Appeal 2017-001057 Application 12/463,020 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. 8 Appeal 2017-001057 Application 12/463,020 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 9 Appeal 2017-001057 Application 12/463,020 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 10 Appeal 2017-001057 Application 12/463,020 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 11 Appeal 2017-001057 Application 12/463,020 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. 12 Appeal 2017-001057 Application 12/463,020 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 13 Appeal 2017-001057 Application 12/463,020 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. 14 Appeal 2017-001057 Application 12/463,020 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. 15 Appeal 2017-001057 Application 12/463,020 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."). 16 Appeal 2017-001057 Application 12/463,020 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. 17 Appeal 2017-001057 Application 12/463,020 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 18 Appeal 2017-001057 Application 12/463,020 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. 19 Appeal 2017-001057 Application 12/463,020 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. 20 Appeal 2017-001057 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, 21 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. 22 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 23 Copy with citationCopy as parenthetical citation