Ex Parte Newton et alDownload PDFPatent Trial and Appeal BoardJun 30, 201710538101 (P.T.A.B. Jun. 30, 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. 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 Appeal 2016-004535 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. 3 Appeal 2016-004535 Application 10/538,101 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). 4 Appeal 2016-004535 Application 10/538,101 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 5 Appeal 2016-004535 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, 6 Appeal 2016-004535 Application 10/538,101 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: 7 Appeal 2016-004535 Application 10/538,101 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 8 Appeal 2016-004535 Application 10/538,101 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 9 Appeal 2016-004535 Application 10/538,101 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. 10 Appeal 2016-004535 Application 10/538,101 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 11 Copy with citationCopy as parenthetical citation