Ex Parte Roh

Patent Trial and Appeal Board

Jan 26, 2017

12679849 (P.T.A.B. Jan. 26, 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.
12/679,849 06/01/2010 Dong-Hyun Roh 012055.0066 9977
89980 7590
NSIP LAW
P.O. Box 65745
Washington, DC 20035
EXAMINER
CHOWDHURY, AFROZA Y
ART UNIT PAPER NUMBER
2628
NOTIFICATION DATE DELIVERY MODE
01/30/2017 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):
pto@nsiplaw.com
pto.nsip@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONG-HYUN ROH
Appeal 2015-004662
Application 12/679,849
Technology Center 2600
Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and
DAVID M. KOHUT, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 4, 7, 8, 10 through 13, 17, 18, and 20 through 22. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We reverse.
Appeal 2015-004662
Application 12/679,849
INVENTION
Appellant’s invention relates to a method of displaying content on a
digital device if situational information meets the display conditions. See
Spec. 2-3. Claim 1 is illustrative of the claimed invention and reproduced
below:
1. A method executed by a terminal for displaying
content, the method comprising:
receiving, by the terminal and from a content providing
apparatus, information regarding conditions for displaying the
content;
collecting, by the terminal, situational information
comprising at least one of information regarding a user of the
terminal and information regarding an external environment;
determining, by the terminal, whether the collected
situational information matches the conditions for displaying
the content; and
selectively displaying, by the terminal, the content based
on a result of the determining, wherein
the receiving of the information regarding the display
conditions comprises receiving metadata regarding the content
together with the content, the metadata comprising the
information regarding the display conditions.
REJECTION AT ISSUE
The Examiner has rejected claims 1 through 4, 7, 8, 10 through 13, 17,
18, and 20 through 22 under 35 U.S.C. § 103(a) as unpatentable over Chew
et al. (US 2006/0293065 Al, published Dec. 28, 2006) and Spiegelman (US
2008/0154696 Al, published June 26, 2008). Final Action 3—11.1
1 Throughout this opinion we refer to the Appeal Brief filed November 24,
2014, Reply Brief filed March 15, 2015, Final Action mailed June 9, 2014,
and the Examiner’s Answer mailed on January 15, 2015.
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Application 12/679,849
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellant’s arguments. We agree with Appellant’s
conclusion that the Examiner erred in rejecting claims 1 through 4, 7, 8, 10
through 13, 17, 18, and 20 through 22.
Independent Claim 1,2, 11 and 12
Appellant argues the Examiner’s rejection of independent claims 1, 2,
11, and 12 is in error as neither Chew nor Spiegelman teach the terminal
receives from a content providing apparatus, information regarding
conditions for displaying content. App. Br. 8—10. Further, Appellant argues
that the Examiner has not provided sufficient rationale to support the
conclusion that the skilled artisan would modify the teachings of Chew and
Spiegelman to arrive at the disputed limitation. App Br. 10-13.
The Examiner responds to Appellant’s arguments finding that Chew
teaches the terminal receives information regarding conditions for displaying
the content. Answer 2 (citing Chew para 36). The Examiner also finds this
feature is taught by Spiegelman, citing Spiegelman’s disclosure of a
graphical user interface to enter user criteria for displaying data. Answer 3
(citing Spiegelman para. 44). The Examiner did not respond to Appellant’s
arguments concerning the rationale to support the combination of the
references.
We have reviewed the evidence cited by the Examiner in the Answer
and the Final Action. Further, we have reviewed the rationale for combining
the references provided in the Final Action. We disagree with the
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Appeal 2015-004662
Application 12/679,849
Examiner’s findings that Chew and Spiegelman teaches the disputed
limitation. The cited teaching of Chew does not show that the conditions are
provided to the terminal as claimed, rather the conditions are from the
mobile device (which equates to the claimed terminal). (See Chew para.
36). Similarly, the cited teaching of Spiegelman discusses the graphical user
interface on the rendering device (similar the claimed terminal) provides the
user’s criteria to the media server. (See Spiegelman para 44). Further, the
Examiner’s rationale to combine the references (to provide a more efficient
way of providing event information, (Final Act. 4)) is insufficient to show
that the skilled artisan would combine two teachings such that the criteria is
provided to the terminal from the media provider as is recited in each of
independent claims 1,2, 11 and 12. Thus, Appellant’s arguments have
persuaded us of error and we do not sustain the Examiner’s rejection of
independent claims 1,2, 11, 12, and the claims which depend thereupon.
Independent claims 8, 10, 18 and 20
Appellant argues the Examiner’s rejection of these claims is in error
as the Examiner has not identified how the teachings of Chew and
Spiegelman would be modified and as such there is no reasonable
expectation of success in combining the references to arrive at the claimed
invention. App. Br. 15—17. Further Appellant argues the combination
changes the principle of operation of Chew. App. Br 17—20.
The Examiner’s Answer, does not respond to the arguments directed
to reasonable expectation of success or principal of operation. Rather, the
Examiner cites to Spiegelman as teaching the claimed content providing
apparatus (which the Examiner equates to Spiegelman’s the portable
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Appeal 2015-004662
Application 12/679,849
rendering device) the conditions for displaying content and the content to the
user terminal. Answer 3^4 (citing Spiegelman paras. 27, 44, 63, and Figs 2—
3). Further the Examiner states the “claims are really broad and the terms
‘terminal’ and ‘content providing apparatus’ are not clearly defined.”
Answer 4.
We disagree with the Examiner’s findings. The Examiner has not
addressed Appellant’s arguments concerning the reasonable expectation of
success or change in principal operation of Chew. Further, we concur with
Appellant, it is not clear to us how the Examiner is modifying the teaching
of Chew and Spiegelman. It appears from the response, on page 3 of the
Answer, that the Examiner is equating Spiegelman’s portable rendering
device (which as discussed above provides user criteria to the media server
(a content provider)) with the claimed content providing apparatus.
However, it is not clear to us from the Examiner’s response and rejection,
how or why this leads the skilled artisan to arrive the claims. According, we
do not sustain the Examiner’s rejection of independent claims 8, 10, 18, 20
or the claims dependent thereupon.
DECISION
The decision of the Examiner to reject claims 1 through 4, 7, 8, 10
through 13, 17, 18, and 20 through 22 under 35 U.S.C. § 103(a).
REVERSED
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