Ex Parte Newton et al

Patent Trial and Appeal Board

Jun 30, 2017

10538101 (P.T.A.B. Jun. 30, 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.
10/538,101 06/08/2005 Philip Steven Newton 2002P02957WOUS 1381
24737 7590 07/05/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue LANGHNOJA, KUNAL N
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
2427
NOTIFICATION DATE DELIVERY MODE
07/05/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP STEVEN NEWTON and
DECLAN PATRICK KELLY
Appeal 2016-004535
Application 10/538,1011
Technology Center 2400
Before DEBRA K. STEPHENS, SHARON FENICK, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—4, 6—11, 13—18, 20-25, 27, 28, 30, and 32—34, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants’ Brief (“App. Br.”) identifies the real party in interest as
Koninklijke Philips N.V.
Appeal 2016-004535
Application 10/538,101
CLAIMED SUBJECT MATTER
The claims are directed to preventing a viewer from switching from a
channel while an advertisement is displayed. Spec. Abstract. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An apparatus in a video display system that is
capable of displaying video programs with advertisements on a
plurality of channels, wherein said apparatus comprises:
an advertisement controller; and
a memory coupled to said advertisement controller;
wherein the advertisement controller is configured to:
prevent switching from a first channel to a second channel
when an advertisement is displayed on said first channel in
response to a first control signal; and
allow the switching in response to a second control signal,
the second control signal being provided at an end of the video
program, and
wherein the advertisement controller comprises a first
Multimedia Home Platform application configured to receive the
first control signal, and in response to receiving the first control
signal, to take exclusive control to keys of a remote controller
used to activate the switching, and a second application
configured to prevent the first Multimedia Home Platform
application from obtaining the exclusive control of the keys of
the remote controller.
App. Br. 23 (Claims Appendix).
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Blahut et al.,
De Ceulaer et al.,
Corvin
Gaviot et al.,
Wang
US 5,532,735
US 6,993,727 B2
US 2001/0054181 Al
US 2002/0144274 Al
US 2002/0191950 Al
July 2, 1996
Jan. 31, 2006
Dec. 20, 2001
Oct. 3, 2002
Dec. 19, 2002
2
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Application 10/538,101
REJECTIONS
Claims 1—4, 6—11, 13, and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wang, Corvin, and De Ceulaer. Final Act. 5.
Claims 30 and 32 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang, Corvin, De Ceulaer, and Blahut. Final Act. 9.
Claims 15—18, 20-25, 27, and 28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wang, Corvin, De Ceulaer, and Gaviot.
Final Act. 10.
Claims 33 and 34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang, Corvin, De Ceulaer, Gaviot, and Blahut. Final
Act. 15.
ISSUES
First Issue: Has the Examiner erred in finding the cited combination
teaches or suggests preventing channel switching by “tak[ing] exclusive
control to[2] keys of a remote controller used to active the switching,” as
recited in claim 1 ?
Second Issue: Has the Examiner erred in finding the cited
combination teaches or suggests “the notification includes a text displayed
2 We note the typographical error in this limitation. The claim recites “take
exclusive control to keys of a remote controller,” which, we believe, should
be corrected to “take exclusive control of keys of a remote controller,” in the
event of further prosecution of this case. Although the claim is unclear as
currently written, we consider the lack of clarity to be due to an obvious
typographical error, and we interpret the phrase consistent with our
recommended correction. We further note this typographical error is present
in each independent claim.
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on a screen of the video display system indicating that a viewer no longer
has an ability to change channels during the advertisements when the
switching is prevented,” as recited in dependent claim 30?
ANALYSIS
First Issue
In rejecting claim 1, the Examiner finds Wang teaches the limitation
“in response to receiving the first control signal, to take exclusive control to
keys of a remote controller used to activate the switching.” Final Act. 6
(citing Wang H 28—29). The Examiner makes similar findings with respect
to independent claims 8, 15, and 22. Appellants argue the independent
claims as a group, so the resolution of this First Issue is determinative of all
of the independent claims. The Examiner explains the cited portions of
Wang describe a system that “disables all manual and automated skipping
functions of the video recording and playback device.” Final Act. 3. The
Examiner further explains that by disabling the skipping functions of the
playback device, the functions cannot be accessed from a remote controller
device of the playback device. As such, control is taken of the keys of the
remote controller. Final Act. 3. The Examiner further finds the operations
described in Wang are not dissimilar to operations described in Appellants’
Specification, which “clearly states the first MHP application can request
exclusive access to input events from the viewer” which is an example of
how the recited “first Multimedia Home Platform application” is configured
to “take exclusive control to keys of a remote controller.” Ans. 5—6 (citing
Spec. 1149-51).
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Appellants argue Wang is deficient because it “implies that a signal is
generated in response to pressing a fast forward function key, however this
signal when received by the player or set-ton box is not executed, thus
clearly teaching away from taking ‘exclusive control to key of a remote
controller used to activate the switching.’” App. Br. 12. Appellants further
contend that “a disclosure that functions are disabled does not even disclose
or suggest how such a disablement is achieved.” App. Br. 14. Appellants
also argue the cited paragraphs in Wang “are completely silent and do not
disclose or suggest anything about controlling any keys,” and the word
“key” is used in Wang only in reference to encryption keys, and not keys of
a remote controller. App. Br. 15—16. According to Appellants:
Wang basically disables the playback device itself while the
present invention takes exclusive control of the remote control
channel switching keys. While the end result may be similar to
that of Wang, the manner of achieving such an end result, namely
by taking exclusive control to keys of a remote controller, is
completely different from the Wang teaching of disabling the
skipping functions of the Wang playback device 16.
App. Br. 17. We are not persuaded by Appellants’ arguments.
Appellants assign an overly narrow interpretation to the limitation “in
response to receiving the first control signal, to take exclusive control to
keys of a remote controller used to activate the switching.” As noted by the
Examiner, Appellants’ Specification provides an example in which “an
application can request exclusive access to the remote control keys that are
used for switching channels.” Spec. 13,11. 24—25. The Specification further
explains that obtaining the exclusive access:
The org.dvb.event API provides first MHP application 330 with
a method to register to receive user events from the remote
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Application 10/538,101
control (here, remote control 125). Using the org.dvb.event API
first MHP application 330 requests exclusive access to certain
remote control key events so that no other application will be
able to receive those events.
Spec. 13,11. 27—31. Appellants’ own description indicates that when
exclusive control is taken of the remote controller, the remote controller
continues to generate signals which are received by the MHP application on
the set top box. The Specification further describes “[d]uring the time that
first MHP application 330 retains exclusive control of the channel switching
function, first MHP application 330 disregards any attempt of the viewer to
change channels . . . .” Spec. 14,11. 11—13. Just as in the cited portions of
Wang, the example embodiment disclosed in Appellants’ Specification
describes “exclusive control” as involving the use of the set top box to
ignore signals received from the remote controller. As a result, we are not
persuaded the Examiner erred in finding Wang teaches “in response to
receiving the first control signal, to take exclusive control to keys of a
remote controller used to activate the switching.”
We are also not persuaded by Appellants’ argument that by receiving,
but not executing, a signal at a set top box, Wang teaches away from the
invention as claimed. 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. Depuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009). A
reference does not teach away, however, if it merely expresses a general
preference for an alternative invention but does not criticize, discredit, or
otherwise discourage investigation into the invention claimed. Id. Here,
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Appellants have not persuaded us nor do we identify anything in the
approach taken by Wang that criticizes or otherwise disparages the approach
recited in Appellants’ claims. To the contrary, and as noted above, Wang
operates in a similar fashion as the exemplary embodiments provided in
Appellants’ Specification. Compare Wang || 28—30 with Spec. 13,11. 27
through 14,11. 14. Accordingly, we sustain the rejection of independent
claims 1, 8, 15, and 22.
Second Issue
Appellants also argue separately for patentability of claim 30, which
recites:
30. The apparatus of claim 1, wherein the apparatus, prior to
the advertisement, generates a notification indicating that
advertisements on the first channel must be viewed and, after
expiration of a selected period of time after the notification, and
prevents the switching, and wherein the notification includes a
text displayed on a screen of the video display system indicating
that a viewer no longer has an ability to change channels during
the advertisements when the switching is prevented.
App. Br. 34—35 (Claims Appendix) (emphasis added).
The Examiner rejects claim 30 as obvious over Wang, Corvin, De
Ceulaer, and Blahut. In rejecting claim 30, the Examiner finds Wang
teaches “notification includes a text displayed on a screen of the video
display system indicating that a viewer no longer has an ability to change
channels during the advertisements when the switching is prevented.” Final
Act. 9 (citing Wang 129). The Examiner relies on Blahut as teaching the
remainder of the claim. Final Act. 10 (citing Blahut Fig. 5, col. 5,11. 26—35,
and col. 6,11. 25—31). The Examiner further explains in the Answer:
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Wang et al teaches apparatus generates an object
indicating that a viewer is no longer has an ability to change
channels during the advertisements when the switching is
prevented (Wang: Para. 0029).
The [Ejxaminer relied on Blahut et al to meet prior to the
advertisement generates a notification indicating that
advertisements on the first channel must be viewed, after
expiration of a selected period of time after the notification (Fig.
5; Col. 5 lines 26—35 and Co 1.6 lines 25—31), the notification
includes a text displayed on a screen of the video display system
(Blahut: Fig. 5; Col .5 lines 26—35 and Col .6 lines 25—31 ).
Ans. 11.
Appellants contend the notification taught by Wang does not occur
when the switching is prevented. App. Br. 18—19. According to Appellants
Wang merely provides a notification that the fast forward button
function is temporarily disabled if a user presses a manual fast
forward button, and not when the switching is prevented. Thus,
if the viewer is prevented from switching but does NOT press
and buttons then, unlike claim 30, no notification is provided in
Wang.
App. Br. 19.
Appellants also argue Blahut’s notification “merely indicates that an
advertisement will be presented shortly,” and consequently, it “does not
indicate that advertisements must be viewed and that the viewer no longer
has an ability to change channels during the advertisements.” App. Br. 20.
Appellants further contend that even if Wang’s disabling of the fast forward
function and its associated message occurs “when switching is prevented,”
the message is not the recited “indicating”:
While such an indication may imply that the user must view a
commercial, nevertheless such an indication does not indicate
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that advertisements on the first channel must be viewed.
Accordingly, a different indication is provided in Wang, which
is not the same as the specific indication recited in claims 30 and
32-34, namely, that the advertisements must be viewed.
Reply Br. 9. We are not persuaded by Appellants’ arguments.
Appellants interpret “when the switching is prevented” to mean
“during the entire period of time during which switching is prevented.” But
the broadest reasonable interpretation, in light of the specification, of
“when” is not as narrow as Appellants suggest. The word “when” is defined
as “at or during the time that,” {New Oxford American Dictionary, 2d Ed.,
Oxford Univ. Press, Inc., 2005) and we find that definition consistent with
the use of “when” in claim 30 and Appellants’ Specification. In light of this
definition, “when the switching is prevented” is construed to include both at
the time that switching is prevented and during the time that switching is
prevented. By displaying the message at the time the button is pressed and
the fast forward function is blocked (see Wang 129), Wang provides a
notification at the time that switching is prevented, and therefore, teaches
“when the switching is prevented.”
As noted above, Appellants also contend Wang and Blahut fail to
teach or suggest messages “indicating advertisements on the first channel
must be viewed.” We disagree, and find the Examiner’s findings and
reasoning set forth in the Answer to be well-supported. Ans. 11.
Specifically, Blahut teaches the use of displayed textual messages indicating
advertisements will be shown. Blahut col. 5,11. 25—31. Wang teaches that
when the commercial skipping feature is activated in his system, a message
is displayed indicating the function is disabled. Wang 129 (“a short
indication that this function is temporarily disabled during playback of a
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commercial”); see also Corvin 128 (“preventing the television viewer from
switching channels while the forced advertisement is played”). Blahut
teaches providing textual notifications regarding upcoming advertisements
prior to displaying those advertisements. Blahut col. 5,11. 25—31. Wang
describes providing indications that functions allowing the viewer to avoid
viewing the commercial, are disabled. Wang 129.
Thus, the combination of Wang’s indication of disabled functionality
and Blahut’s provision of textual notifications to a user teaches the disputed
limitation. Moreover, we agree with the Examiner that an ordinarily skilled
artisan, possessing this knowledge, would have found it obvious to express
Wang’s indication of disabled functionality as a textual message as taught by
Blahut. Accordingly, we agree with the Examiner’s findings with respect to
claim 30, and we sustain the rejection.
Remaining Claims
Appellants present no additional arguments for patentability of any
other dependent claims. As the arguments presented above are not
persuasive of Examiner error, the remaining claims fall with their respective
independent claims.
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DECISION
The Examiner’s rejections of claims 1—4, 6—11, 13—18, 20-25, 27, 28,
30, and 32—34 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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