Ex Parte OSTROVER et al

Patent Trial and Appeal Board

May 31, 2018

14060983 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/060,983 10/23/2013
22440 7590 06/04/2018
GOTTLIEB RACKMAN & REISMAN PC
270 MADISON A VENUE
8THFLOOR
NEW YORK, NY 10016-0601
FIRST NAMED INVENTOR
Lewis S. OSTROVER
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.
3054/081 CON 7318
EXAMINER
MESA,JOSEM
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
patenteaction@grr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEWIS S. OS TROVER and BRADLEY T. COLLAR
Appeal2018-000957
Application 14/060,983
Technology Center 2400
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1, 3-10, and 14--19, which constitute all the pending
claims in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify Warner Bros. Entertainment, Inc. as the real party in
interest (App. Br. 2).
Appeal2018-000957
Application 14/060,983
THE INVENTION
Appellants' claimed invention is directed to an "optical disc player
with a standard digital port, such as a USB port, coupled to an external
storage, such as a thumb drive" (Abstract).
Independent claims 1 and 14, reproduced below, are representative of
the subject matter on appeal:
1. An optical disc player for reading an optical disc
compnsmg:
a housing;
an optical head disposed in said housing and
arranged to receive the optical disc through said housing
and to read disc content from the disc;
a presentation engine disposed in said housing and
arranged to present program signals including audio and
video components to an output port;
a controller disposed in said housing;
an external port accessible through said housing and
configured to receive removable external devices; and
an external device removably attached and
connected to said external port and holding external data
including commands and external content, said external
data being stored in said external device before said
external device is attached and connected to said external
port; wherein said controller is arranged to combine said
disc and said external content into combined content, said
presentation engine presenting program signals to the
output port corresponding to said combined content.
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Application 14/060,983
14. An optical disc player for reading an optical disc
and displaying content comprising:
an optical head;
a presentation engine arranged to present program
signals including audio and video components to an output
port;
a global positioning component providing position
information indicative of the local geographic location of
the optical disc player; and
a controller arranged to receive data from a disc
through said optical head, and position information from
said global positioning component and to transmit disc
content from said disc, said disc content being specific to
the local geographic location of the optical disc player to
said presentation engine.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is the following:
Diedrich US 2002/0199018 Al Dec. 26, 2002
Abecassis US 2003/0194211 Al Oct. 16, 2003
Kim US 2006/0193608 Al Aug. 31, 2006
Wei US 2006/0209645 Al Sept. 21, 2006
Wolosewicz US 2007/0174624 Al July 26, 2007
Gross US 2007 /0203845 Al Aug.30,2007
Kung US 2012/0023150 Al Jan.26,2012
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Application 14/060,983
REJECTIONS
The Examiner made the following rejections:
Claims 1, 3, and 8-10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kim and Gross. Final Act. 12.
Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kim, Gross, and Abecassis. Final Act. 19. 2
Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kim, Gross, Abecassis, and Kung. Final Act. 20.
Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kim, Gross, and Wei. Final Act. 22.
Claim 7 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kim, Gross, and W olosewicz. Final Act. 23. 3
Claims 17-19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kim, Gross, and Kung. Final Act. 24.
Claim 14 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Kim and Diedrich. Final Act. 29.
Claims 15 and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kim, Diedrich, and Abecassis. Final Act. 31.
ISSUES
The issues are whether the Examiner erred in finding:
2 Although claim 4 is mentioned by Appellants in the arguments regarding
claim 5 (see App. Br. 11 ), Appellants do not respond to the Examiner's
rejection of claim 4. Accordingly, we summarily sustain the rejection of
claim 4.
3 Appellants do not respond to the Examiner's rejection of claim 7.
Accordingly, we also summarily sustain the rejection of claim 7.
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Application 14/060,983
1. the combination of Kim and Gross teaches or suggests combining content
from an external device with content from an internal optical disc as
required by claim 1;
2. the combination of Kim, Gross, Abecassis, and Kung teaches or suggests
the limitation of "said Internet port is enabled only by commands from
said external storage and is disabled in the absence of said external
storage," as recited in dependent claim 5;
3. the combination of Kim, Gross, and Wei teaches or suggests the
limitation of "said controller operates said head to read and write disc
data on said optical disc in accordance with said external data," as recited
in dependent claim 6;
4. the combination of Kim and Diedrich teaches or suggests "said disc
content being specific to the local geographic location of the optical disc
player to said presentation engine," as recited in independent claim 14.
ANALYSIS
Claim 1
Appellants argue that "Kim shows a disc player that receives
information from and to another source through an Ethernet connection"
(App. Br. 8) and that "the only thing that is connected to an ETHERNET
jack is an ETHERNET plug terminating a wire that could be several hundred
feet long and connected to some other device" (App. Br. 9). Appellants
contend Gross "teaches how [] licensed data is to be combined with user
data to generate a multimedia presentation" and further that "[ w ]hat is
missing from the combination of Kim and Gross is the concept of using
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Application 14/060,983
content from the external storage and combining it with the original content
from the optical disc for presentation to a user" (App. Br. 10).
We are not persuaded by Appellants' argument. The Examiner finds,
and we agree, that Kim "combine[s] disc [content] with downloaded
additional data from outside of the optical disc" (Ans. 4, citing Kim Figs. 4--
5, ,r,r 81, 116-117), and further finds that "Gross also discloses an external
port accessible through said housing and configured to receive removable
external devices" (Final Act. 15, citing Gross Fig. 3, ,r,r 22-24, 30). In other
words, the Examiner relies on Kim for the teachings that content from
external and internal devices can be combined and on Gross for the teaching
of a portable media player that can receive "removable external devices"
(Ans. 31 ). The Examiner explains that Gross "enhances the operation of
the primary reference when incorporating 'an external port accessible
through said housing and configured to receive removable external devices"'
(Ans. 31, citing Gross Fig. 3, ,r,r 22-24, 30). Therefore, one skilled in the art
at the time of the invention would know that additional removable external
devices allow for more options for receiving content from external devices.
Such a combination is not "more than the predictable use of prior art
elements according to their established functions" (KSR International Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007)). We note that Gross teaches the
desirability of data transfer accommodating a wide variety of formats. See
Gross Fig. 3, ,r 22.
Accordingly, we sustain the Examiner's rejection of independent
claim 1, as well as dependent claim 3, and independent claim 8 and
dependent claims 9 and 10 not separately argued. See App. Br. 11. We also
sustain the Examiner's rejection of dependent claims 17-19, as the
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Application 14/060,983
combination of the references using Gross' flash device as the claimed
"external device" as described above teaches or suggests these dependent
claims.
Claim 5
Claim 5 recites "said Internet port is enabled only by commands from
said external storage and is disabled in the absence of said external storage."
Appellants argue "Abecassis discloses a mode in which the playing of
content from the Internet is temporarily stopped when the DVD play back is
stopped" and that Kung "is a communication device used to receive content
from an external device and to transmit it to another location" (App. Br. 12).
We are not persuaded by Appellants' argument. The Examiner finds,
and we agree, that Kung teaches
the Internet is enabled by commands from an external storage
device 230 when the external storage device 230 is connected to
the asserted connection port 226. Second, the Internet is
disabled when the external storage device 230 is not connected
to the asserted connection port 226
(Final Act. 21, citing Kung Figs. 2-3, ,r,r 15, 18-21, 23, 25-26) emphasis
omitted). Appellants do not address and rebut the Examiner's findings
regarding Kung but instead make unsupported attorney argument regarding
the differences between the references and the "present invention" (App. Br.
12). See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney
arguments or conclusory statements are insufficient to rebut a prima facie
case). Appellants' further arguments regarding Kung in the Reply Brief (see
Reply Br. 8) were not raised in the Appeal Brief, and are not responsive to
an argument raised in the Examiner's Answer. As no good cause is shown,
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Application 14/060,983
this argument will not be considered by the Board. See 37 C.F.R.
§ 4I.41(a)(2).
Accordingly, we affirm the Examiner's rejection of claim 5.
Claim 6
Claim 6 is dependent on claim 1 and recites "said controller operates
said head to read and write disc data on said optical disc in accordance with
said external data." Appellants' complete argument is that "Wei merely
discloses an apparatus with a read/write head. Kim does not disclose such
an operation, and neither does Gross. Clearly a person skilled in the art
would not find any teachings in the suggest[ ed] combination to make the
device recited by claim 6" (App. Br. 13).
We are not persuaded by Appellants' argument. The Examiner finds,
and we agree, that
[ o ]ne will be motivated to incorporate the above feature into the
system of Kim as taught by Wei for the benefit of using an
optical head to read and write optical discs on a recording
medium in order to increase the storage capacity because [the]
optical disc has high storage density
(Final Act. 23). Again, Appellants do not address and rebut the Examiner's
findings but instead make unsupported attorney argument regarding the lack
of teachings in the suggested combination. See, e.g., In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) (attorney arguments or conclusory statements
are insufficient to rebut a prima facie case). Appellants' further argument
regarding the combination of Kim, Gross, and Wei in the Reply Brief (see
Reply Br. 9) was not raised in the Appeal Brief, and is not responsive to an
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argument raised in the Examiner's Answer. As no good cause is shown, this
argument will not be considered by the Board. See 37 C.F.R. § 4I.41(a)(2).
Accordingly, we affirm the Examiner's rejection of claim 6.
Claim 14
Appellants argue that while "Diedrich discloses a device that includes
a GPS that is used to determine the geographic location of the device," the
"claimed invention presents information from a disc that depends on the
location of the device" (App. Br. 14--15).
We agree. The Examiner finds that Diedrich teaches "a data structure
is stored on a signal bearing medium and is accessible by a search tool to
resolve a query containing geographic information indicative of a requesting
device's current position" (Final Act. 30, citing Diedrich ,r 19 (mis-cited by
the Examiner as ,r 33), Fig. 1) ( emphasis omitted). However, the Examiner
supplies no rationale why one skilled in the art would apply the teaching of
Diedrich's data structure to create the claimed "disc content being specific to
the local geographic location of the optical disc player," as the Examiner's
stated rationale of "improve[ing] efficiency when accurately locating the
user's device" (Final Act. 30, 31) does not account for motivation to make
disc content be location-specific.
Accordingly, we are constrained by the record to reverse the
Examiner's rejection of independent claim 14 and dependent claims 15 and
16 which depend therefrom.
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Application 14/060,983
CONCLUSION
The Examiner:
1. did not err in finding the combination of Kim and Gross teaches or
suggests combining content from an external device with content from an
internal optical disc as required by claim 1 ;
2. did not err in finding the combination of Kim, Gross, Abecassis, and
Kung teaches or suggests the limitation of "said Internet port is enabled
only by commands from said external storage and is disabled in the
absence said of external storage," as recited in dependent claim 5;
3. did not err in finding the combination of Kim, Gross, and Wei teaches or
suggests the limitation of "said controller operates said head to read and
write disc data on said optical disc in accordance with said external data,"
as recited in dependent claim 6;
4. did err in finding the combination of Kim and Diedrich teaches or
suggests "said disc content being specific to the local geographic location
of the optical disc player to said presentation engine," as recited in
independent claim 14.
DECISION
The Examiner's decision rejecting claims 1, 3-10, and 17-19 under
35 U.S.C. § 103 is affirmed.
The Examiner's decision rejecting claims 14--16 under 35 U.S.C.
§ 103 is reversed.
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).
AFFIRMED-IN-PART
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