Ex Parte Lorkovic

Patent Trial and Appeal BoardOct 19, 2016

11384662 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111384,662 0312012006 19437 7590 10/21/2016 P&TLAW,APC 1965 Chatsworth Boulevard San Diego, CA 92107 FIRST NAMED INVENTOR Joseph Ernest Lorkovic 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. LORK-001-USl 1962 EXAMINER CHIN, RICKY ART UNIT PAPER NUMBER 2423 NOTIFICATION DATE DELIVERY MODE 10/21/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): eofficeaction@appcoll.com kyle@ptlawgroup.com docketing@ptlawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH ERNEST LORKOVIC Appeal2015-004341 Application 11/384,662 Technology Center 2400 Before JOSEPH P. LENTIVECH, SHARON PENICK, and DAVID J. CUTITTA II, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's final rejection of claims 62---64, 67---69, 71-73, 75, and 77-86. Claims 1---61, 65, 66, 70, 74, and 76 have been canceled. App. Br. 3. We have jurisdiction over the pending claims under 35 U.S.C. Â§ 6(b ). We affirm. STATEMENT OF THE CASE Appellant's Invention Appellant's invention generally relates to home entertainment content delivery, interactive communications systems, linked video content and the Appeal2015-004341 Application 11/384,662 business processes related to interactive content delivery. Spec. 1. Claim 62, which is illustrative, reads as follows: 62. A system for displaying video content and associated web content, comprising: a processor operable to: cause video content to display in an area of a first display of a first remote device; receive a first set of position coordinates associated with a user selection within the first area of the first display during display of the video content on the first display; identify web content based on the first set of position coordinates; and cause the web content to display on a second display of a second remote device, wherein the first device and the second device are remote from each other, and wherein the processor does not reside at the first remote device and the second remote device. Rejections Claims 62---64, 67---69, 71-73, and 77-85 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Astiz et al. (US 5,918,012; issued June 29, 1999) ("Astiz") and Zimmerman et al. (US 2005/0229233 Al; published Oct. 13, 2005) ("Zimmerman"). Final Act. 6- 17. Claims 75 and 86 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Astiz, Zimmerman, and Salkind et al. (US 2004/0233233Al; published Nov. 25, 2004) ("Salkind"). Final Act. 17-18. 2 Appeal2015-004341 Application 11/384,662 ANALYSIS Claim 62 Issue 1 : Did the Examiner err by finding that the combination of Astiz and Zimmerman teaches or suggests a processor operable to "cause the web content to display on a second display of a second remote device, wherein the first device and the second device are remote from each other, and wherein the processor does not reside at the first remote device and the second remote device," as recited in claim 62? Appellant contends the combination of Astiz and Zimmerman does not teach or suggest the disputed limitation. Br. 5-11, 14--16. Appellant contends: The Office recogmzes that Astiz does not disclose Applicant's claimed system in its entirety, and concedes that Astiz does not disclose the claimed second remote device, and further concedes that Astiz's processor does not cause the web content to display on a second display of a second remote device. Given the deficiencies in ii~stiz, Zimmerman must not only disclose the claimed second remote device and the claimed causing display of web content at the second device by a processor, but Zimmerman's disclosure must integrate with Astiz's components to result in Applicant's claimed system. Br. 8 (citing Final Act. 7) (internal citations omitted). Appellant contends "[a]dding Zimmerman's content augmentation application to Astiz's PC would not modify Astiz's processor to function as Applicant's claimed processor." Br. 9. According to Appellant, "Astiz's processor, post- combination, will continue to statically deliver content [to] Astiz's PC/viewer." Id. We are not persuaded by Appellant's contentions, which are premised on a "physical" or "bodily" incorporation of limitations of one reference into 3 Appeal2015-004341 Application 11/384,662 the other. However, this is not the standard. See Jn re Sneed, 710 F .2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCP A 1981 ). "Combining the teachings of references does not involve an ability to combine their specific structures." In re Nievelt, 482 F.2d 965, 968 (CCP A 1973). Rather than express obviousness as the physical incorporation of a structure from one reference into the structure of another reference, the prior art should be viewed as a combination of teachings from different sources, and the use of those teachings by one of ordinary skill in the art. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (the conclusion of obviousness can be based on the interrelated teachings of multiple patents, the effects of demands known to the design community or present in the marketplace, and the background knowledge possessed by a person having ordinary skill in the art.) Here, the Examiner relies on two references, Astiz and Zimmerman. Both references are directed to providing complementary information or content based on a user interaction with a video (e.g., a user clicking on a portion of a video). Astiz, Abstract, 4:54--59; Zimmerman, Abstract, i-f 42. The Examiner finds, and we agree, that Astiz teaches a processor (Astiz, Fig. 3, element 33) operable to: cause video content to display in an area of a first display of a first remote device (Astiz 4:40-44); receive a first set of position coordinates associated with a user selection within the first area of the first display during display of the video content on the first display (Astiz 4 Appeal2015-004341 Application 11/384,662 4:54--59, 65----67; 8:6-9); and identify web content based on the first set of position coordinates (Astiz 8:13-19). Final Act. 6-7. We agree Astiz teaches that the processor is further operable to cause the web content to display on a second display. Final Act. 7 (citing Astiz 10:53----65). We also agree with the Examiner's finding that Zimmerman teaches a processor operable to cause web content to display on a display of a second remote device. Ans. 16; see also Zimmerman i-f 57. As such, the combination of Astiz and Zimmerman teaches or suggests the disputed limitation. Accordingly, we are not persuaded the Examiner erred in finding the combination of Astiz and Zimmerman teaches or suggests the disputed limitation. Issue 2: Did the Examiner err in combining the teachings of Astiz and Zimmerman? Appellant contends the combination of Astiz and Zimmerman is improper. Br. 13-14. In particular, Appellant contends the combination is improper because "absent any clear disclosure in Astiz or Zimmerman, it is not possible to modify the server in Astiz to cause web content to display on a second device, since Astiz's processor is statically bound to delivering the web content to the first device at which the user selection occurred." Br. 14. Appellant further contends "[t]he Astiz system would have to be reengineered to implement the alleged teaching of the routing feature in Zimmerman, and neither Zimmerman nor Astiz demonstrate how such reengineering is possible. Id. Appellant further contends the combination is improper because the teachings of Astiz and Zimmerman teach away from each other. Br. 14--16. In this regard, Appellant contends: 5 Appeal2015-004341 Application 11/384,662 Even if Zimmerman were combined with Astiz, Zimmerman's "query" selection would also need to be implemented in Astiz to carry out the Zimmerman secondary content and routing functionality. Applicant notes that the devices used in Zimmerman in relation to the user selection are different than the devices used in Astiz. Moreover, the query in Zimmerman is different than the alleged user selection of Astiz, and also different from the user selection as claimed. Consequently, integration of the Zimmerman query selection into the Astiz system is not possible without altering how Astiz functions, or without merely resulting in two discrete systems that do not integrate with each other: (1) the Astiz system, and (2) the Zimmerman system. Br. 14. We are not persuaded by Appellant's contentions, which are premised on a "physical" or "bodily" incorporation of limitations of one reference into the other. As discussed supra, this is not the standard. See In re Sneed, 710 F.2d at 1550. As also discussed supra, the relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d at 425. We find these teachings to be properly combinable. "Common sense teaches ... that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle" since the skilled artisan is "a person of ordinary creativity, not an automaton." KSR, 550 U.S. at 420-21. We further find that the Examiner has articulated how the claimed features are met by the proposed combination of the reference teachings with some rational underpinning, consistent with the guidelines stated in KSR. See Final Act. 8. Appellant has not provided evidence 6 Appeal2015-004341 Application 11/384,662 persuasive to show that modifying the HTTP server of Astiz to transmit the web content to a second remote device, as taught by Zimmerman, was "uniquely challenging or difficult for one of ordinary skill in the art," or that such a combination "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). We are also not persuaded by Appellant's contention that the references teach away from each other. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Kahn, 441F.3d977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). In their assertion, Appellant states "[t]hus, incorporating Zimmerman's query functionality into the Astiz system would alter how the user selection occurs, and would consequently teach away from the claims." Br. 15. Appellant fails to persuasively show that Zimmerman discredits or discourages the claimed solution. Instead, Appellant's contention relies on bodily incorporating Zimmerman's query functionality into the Astiz system, which we find unpersuasive for the reasons discussed supra. Consequently, we are not persuaded the Examiner erred in combining the teachings of Astiz and Zimmerman. For the foregoing reasons, we are not persuaded the Examiner erred in rejecting claim 62 and claims 63, 64, 67, 68, 71-73, 75, 77-80, and 82-85, which depend from claim 62 and are not separately argued with particularity. 7 Appeal2015-004341 Application 11/384,662 Claim 69 Issue 3: Did the Examiner err by finding that the combination of Astiz and Zimmerman teaches or suggests a processor operable to "receive, from a third remote computing device, an indication of the range of vertical coordinates, and an indication of the range of horizontal coordinates; [and] receive, from the third remote computing device, an indication of the time range, wherein the time range corresponds to when the virtual object is displayed during playback of the video content," as recited in claim 69? Appellant contends the combination of Astiz and Zimmerman fails to teach or suggest the disputed limitation. Br. 11-12. Particularly, Appellant contends: Claim 69 specifies that the processor receives indications of the vertical and horizontal coordinate ranges and the time range from a third remote computing device. It follows that the processor receives individual coordinates and a time from one remote computing device, and also receives coordinate and time ranges from another remote computing device. According to the rejection of Claim 62, the processor in Astiz includes "components 33, 34, and 35". (See Final Office Action, p. 6). According to the rejection of Claim 69, the third remote computing device is "a computing device of at least an internet server [33] or a local file server", where the local file server stores the script file 34, as described at col. 8, lines 5-20. (See Final Office Action, p. 11 ). It is noted that the Office's rejection impermissibly requires the internet/local file servers 33134 of Astiz to receive the coordinate and time ranges from itself, and thus teaches away from Claim 69, which specifies receipt of the ranges from a remote computing device. Br. 11-12. 8 Appeal2015-004341 Application 11/384,662 We do not find Appellant's contentions persuasive. The Examiner finds "element 33 which discloses the internet server may be construed as the processor or components 33, 34, and 35 may be construed as the processor as a separate component from the viewer and browser." Final Act. 6 (emphasis added). Thus, the Examiner finds Astiz's HTTP Server 33 by itself teaches or suggests the claimed processor. Appellant's argument does not address this finding. As such, we disagree with Appellant's contention that the Examiner "impermissibly requires the internet/local file servers 33/34 of Astiz to receive the coordinate and time ranges from itself." Br. 12 (emphasis omitted). Accordingly, we are not persuaded the Examiner erred in rejecting claim 69. Claim 81 Issue 4: Did the Examiner err by finding that the combination of Astiz and Zimmerman teaches or suggests a processor operable to "cause the web content to display on the second display without additional user interaction following the user selection," as recited in claim 81? Appellant contends the Examiner erred in rejecting claim 81 because Claim 81 specifies that Applicant's claimed processor causes the web content to display at the second device without additional user interaction following the user selection. As noted by the Office, Zimmerman's paragraph [0057] provides for a consumer/user-based request that results in display of complimentary information on a second device (Final Office Action, p. 15). Applicant submits that this request by the user qualifies as additional user interaction that is explicitly excluded in Claim 81 .... Br. 13. 9 Appeal2015-004341 Application 11/384,662 We do not find Appellant's contention persuasive. The Examiner relies on Astiz, not Zimmerman, for teaching "displaying the web content onto the second screen/browser without additional user interaction." Ans. 22 (citing Astiz 6:45-55; 12:15-25). Because Appellant's contention fails to address the express findings of the Examiner, it is unpersuasive of error. Accordingly, we are not persuaded the Examiner erred in rejecting claim 81. Claim 86 Issue 5: Did the Examiner err by finding that the combination of Astiz, Zimmerman, and Salkind teaches or suggests wherein the range of vertical coordinates are indicated by top and bottom vertical positions corresponding to left and right barriers drawn by a user at the third remote computer, and wherein the range of horizontal coordinates are indicated by start and end points corresponding to horizontal space between the left and right barriers drawn by the user at the third remote computer, as recited in claim 86? Appellant contends the combination of Astiz, Zimmerman, and Salkind fails to teach or suggest the disputed limitations because the relied upon portions of Salkind: [I]ndicate that the user merely "selects" an item to track, and the system draws a box around the object by finding points of similar parameters. A user selection of an object is not the same as receiving ranges of coordinates that were drawn by a user. Salkind goes on to indicate that a shape of the object is extracted from the box using a trained neural net, which is not user-drawn input. 10 Appeal2015-004341 Application 11/384,662 Br. 12-13. (citing Salkind, Figs. 6-8; iii! 77-79) (internal citations omitted). We do not find Appellant's contention persuasive. 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). Here, the Examiner finds Astiz teaches or suggests "wherein the range of vertical coordinates are indicated by top and bottom vertical positions corresponding to left and right barriers, and wherein the range of horizontal coordinates are indicated by start and end points corresponding to horizontal space between the left and right barriers." Ans. 20-21 (citing Astiz 8:5-58; 9:17-55). The Examiner finds Salkind teaches "a user drawing the boundaries/barriers for defining a hotspot at a remote computer device connected to the internet; wherein the upper left hand coordinate and a lower right hand coordinate are used for a rectangle outlining the box to make an item hot." Ans. 21 (citing Salkind iii! 7 6-80). Based on these findings, the Examiner concludes the combination of Astiz and Salkind teaches or suggests the disputed limitations. Because Appellant's contention fails to address the combined teachings of the references, it is unpersuasive of error. Accordingly, we are not persuaded the Examiner erred in rejecting claim 86. DECISION We affirm the Examiner's rejections of claims 62---64, 67---69, 71-73, 75, and 77-86. 11 Appeal2015-004341 Application 11/384,662 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). AFFIRMED 12