Ex Parte Shyu

Patent Trial and Appeal Board

Jun 30, 2017

14021771 (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.
14/021,771 09/09/2013 Fang-Yuan Shyu 055739/436019 2773
826 7590 07/05/2017
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
LEE, MICHAEL
ART UNIT PAPER NUMBER
2422
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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FANG-YUAN SHYU
(Applicant: AMTRAN TECHNOLOGY CO., LTD.)
Appeal 2015-003312
Application 14/021,771
Technology Center 2400
Before ST. JOHN COURTENAY III, CARLA M. KRIVAK, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—29. We have jurisdiction under 35 U.S.C. § 6(b). There was an
oral hearing on June 15, 2017.
We affirm.
Appeal 2015-003312
Application 14/021,771
Introduction
Appellant states the invention relates “to a television integrated with a
network.” Spec. 13. Appellant’s Specification identifies issues related to
television network and movie content along with other audio-visual
communication services, such as applications that use H.323 (a protocol for
audio-visual communication sessions over packet-switched networks) and
VoIP (Voice over Internet Protocol), see id. Tflf 4—7, and states the invention
solves associated problems by disclosing:
a method of audio-visual communication using a television . . .
which aims at enabling users to enjoy the network visual and
voice communication service with a television, wherein the
techniques of wired broadband or wireless broadband network
and the digital television are integrated together. Thus, the
television is not only capable of receiving broadcasted signals
passively, but also capable of achieving bi-directional
communication among users, and receiving the latest TV
information while conducting communications synchronically.
Id. 1 8.
Claims 1 and 19 are illustrative:
1. A method comprising:
causing an outgoing call request to be transmitted to a
remote party, wherein the outgoing call request, in the form of
an indication of a current dialing state, is displayed in a visual
communication screen area on a display;
establishing a communication link with the remote party
in an instance in which an answering signal is received from the
remote party, the communication link enabling a multi­
directional audio and visual conversation, wherein in an
instance in which the communication link is established, the
indication of the current dialing state is replaced by an
indication of a conversation state in the visual communication
screen area of the display; and
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causing, using a processing unit, a received video of the
remote party to be displayed in the visual communication
screen area, wherein the display is operable to display
multimedia content in a multimedia screen area simultaneously
with the received video of the remote party in the visual
communication screen area.
19. A method comprising:
causing sound captured by a sound pickup unit to be
transmitted as a transmit sound signal to a remote party;
causing video captured by a video shooting unit to be
transmitted as a transmit video signal to the remote party,
wherein the sound captured by the sound pickup unit and the
video captured by the video shooting unit are transmitted via a
first network and multimedia content is received via a second
network, the first network and the second network being
disparate networks; and
providing a non-interrupted audio and video
communication with the remote party over a communications
link by simultaneously displaying a received video in a visual
communication screen area of a display, outputting a received
sound signal, and transmitting the transmit sound signal and the
transmit video signal to the remote party.
App. Br. 28, 34 (Claims App’x).
Rejections
Claims 19-29 stand rejected under 35 U.S.C. § 102(e) as anticipated
by DeWeese. Final Act. 2—5.
Claims 1—18 stand rejected under 35 U.S.C. § 103(a) as obvious in
view of DeWeese et al. (US 2010/0047487 Al; Feb. 24, 2011) (“DeWeese”)
and Kim et al. (US 2001/0042095 Al; Nov. 15, 2001) (“Kim”). Final Act.
5-8.
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ISSUES
The issues presented by Appellant are whether the Examiner errs by:
(a) rejecting claim 19 as anticipated by DeWeese {id. at 25—27);
(b) failing to establish a prima facie case of obviousness for claims 1—
18 (App. Br. 9-13);
(c) rejecting claim 1 as obvious over the combined teachings of
DeWeese and Kim {id. at 13—22);
(d) rejecting claim 2 and 10 as obvious over the combined teachings
of DeWeese and Kim {id. at 22—23);
(e) rejecting claim 3 and 11 as obvious over the combined teachings
of DeWeese and Kim {id. at 23—25); and
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions of reversible error. We disagree with Appellant’s conclusions.
Instead, we adopt the Examiner’s findings and reasons as set forth in the
Final Rejection from which this appeal is taken and as set forth in the
Answer. We highlight the following for emphasis.
Anticipation
Claim 19
In finding DeWeese discloses all elements of claim 19, the Examiner
maps the recited “first network” for transmission of captured audio and
video to a remote party to the network path between the user equipment 97,
98 and chat server 91 as shown in DeWeese’s figure 2B, and the recited
“second network” for reception of multimedia content to the path between
the equipment and the television distribution facility 93. Appellant argues
this finding constitutes error. App. Br. 25—27. We disagree.
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Figure 2B shows separate network pathways for television signals and
chat signals as follows:
m m
“FIG. 2B is a system diagram showing how multiple user television
equipment devices may be connected to a television distribution facility and
a separate server via neighborhood networks in accordance with the present
invention.” DeWeese 124.
Appellant contends “the DeWeese system must use the television
distribution facility, no other pathway is disclosed.” Id. at 25. To prove the
point, Appellant points to DeWeese’s statement that “[t]he system therefore
may eliminate the need for additional communications paths separate from
the paths that carry television signal broadcast channels for the transmission
of chat communication.” Id. at 25—26 (quoting DeWeese 73). In apparent
recognition that this statement is in reference to DeWeese’s Figure 2A,
which shows all communications with both the chat server and the television
distribution facility over a single pathway, and that Figure 2B, on the other
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hand, specifically shows the chat server and the television distribution
facility connected to the user equipment through separate network paths,
Appellant further contends that
even though the server 91 and television distribution facility 93
are not combined in Figure 2B, DeWeese still confirms that the
chat communications generated by the server and the television
generated by the television distribution system are transmitted
on the same network after they depart the neighborhood node.
As such, the DeWeese disclosure requires the communications
paths to be joined and thus the paths cannot be disparate
networks as claimed.
App. Br. 26.
This argument is unpersuasive. Applying a broad but reasonable
interpretation, consistent with the Specification, and in view of the ordinary
dictionary meanings of “disparate,”1 we agree with the Examiner that an
ordinarily skilled artisan would have understood the two network paths
shown in Figure 2B (for DeWeese’s chat server and television distribution
facility) disclose disparate networks, as recited.
Accordingly, we sustain the Examiner’s § 102 rejection of
representative claim 19, and also independent claim 24, which Appellant
argues together with claim 19. See 37 C.F.R. § 41.37(c)(l)(iv).
Prima Facie Case for Claims 1—18
Appellant argues the Examiner fails to establish a prima facie case of
obviousness under § 103 for claims 1—18 because “there are multiple aspects
of each of the independent claims that the Office has not addressed at all.”
1 See, e.g., www.merrjam-webster.com/dlctionary/dlsparate (last accessed
June 25, 2017) (disparate means “markedly distinct in quality or character”).
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App. Br. 10. Appellant identifies specific requirements from claims 1 and 2
that Appellant contends the Examiner fails to address. See id. at 10—13.
This argument is unpersuasive. As the Federal Circuit has clarified,
“the prima facie case is merely a procedural device that enables
an appropriate shift of the burden of production.” Hyatt v.
Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). See also In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The Patent and
Trademark Office (“PTO”) satisfies its initial burden of
production by “adequately explaining] the shortcomings it
perceives so that the applicant is properly notified and able to
respond.” Hyatt, 492 F.3d at 1370. In other words, the PTO
carries its procedural burden of establishing a prima facie case
when its rejection satisfies 35 U.S.C. § 132, in “notifying] the
applicant . . . [by] stating the reasons for [its] rejection, or
objection or requirement, together with such information and
references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” 35 U.S.C.
§ 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.” Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in original).
Regarding the purportedly unaddressed claim requirements identified
by Appellant, we disagree. The Examiner identifies disclosure in DeWeese
and Kim that fairly maps to all claim requirements. Appellant’s assertion
that the Examiner fails to address claim 1 ’s requirement to display a call
request “in the form of an indication of a current dialing state” (App. Br. 10)
is exemplary. The Examiner, by identifying that “Kim also discloses a
chatting system where when the request to hook-up is delayed an indication
of the delay is displayed while the dialing-up condition is pending (section
[0065])” (Final Act. 6 (emphasis omitted)), the Examiner fairly identifies
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how Kim teaches this claim requirement. It is clear the Examiner’s rejection
is not “so uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection.” In re Jung, 637 F.3d at 1362.
Claim 1
Appellant argues that in DeWeese’s teaching of a television-based
chat system, “the addition of a video to an existing chat is patentably distinct
from a method by which a user causes an outgoing call request to be
transmitted and, then, enables a video call to take place once a connection is
made.” App. Br. 14. Thus, Appellant asserts, the Examiner errs in finding
DeWeese teaches “causing an outgoing call request to be transmitted to the
remote party,” as recited in claim 1. Id.
Appellant’s argument essentially turns on whether the claimed “call
request” encompasses a “chat request” as described in DeWeese (see, e.g.,
DeWeese Abstract). Under a broad but reasonable interpretation, in view of
Appellant’s Specification and as used in the claims, we agree with the
Examiner that ordinarily skilled artisans would have understood the phrase
“call request” to encompass a request for chat communication, as disclosed
in DeWeese.
Appellant’s Specification states:
When the user wants to make an outgoing call, he/she uses
the remote controller of the television or the television to display
the dial menu on the TV image, and then selects the remote user to
be contacted with from the contact list of the dial menu, or inputs
the number of the outgoing call via the remote controller to
complete the dialing operation. Then, the user waits for a response
from the remote user.
Spec. 112.
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Thus, Appellant’s Specification, one way to issue a call request is by
selecting a user from a contact list. Similarly, DeWeese teaches initiating a
chat request by selecting a user from a buddy list. See DeWeese ]Hf 88—92.
In addition to text chats, DeWeese teaches chats audio chats, e.g., by using
audio conferencing equipment located in a telephone system central office,
and video chats, e.g., by using a video bridge. See DeWeese Tflf 104—14;
Figs. 10-12. The ordinarily skilled artisan would have understood that using
such technologies as telephony audio conferencing equipment or video
bridges when contacting a user to request initiation of a chat session, as
taught in DeWeese, includes “calling” (“causing an outgoing call request to
be transmitted to the remote party”) the user, as recited in claim 1.
Appellant also argues the Examiner errs in finding the combination of
DeWeese and Kim teaches or suggests “each of the three distinct displayed
states recited.” App. Br. 16 (emphasis removed). “Claim 1 requires three
different indications to be displayed in the secondary picture, namely (1) an
indication of a current dialing state; (2) an indication of conversation state;
and (3) received video.” Id. at 17 (emphasis added).
Before proceeding, we note claim 1 recites only two indications: (1)
display of “an indication of a current dialing state” as part of the outgoing
call request, and (2) when communication is established, “the indication of
the current dialing state is replaced by an indication of a conversation state.”
Separately from the two “indication” requirements, claim 1 requires display
of “received video of the remote party,” and that the “display is operable to
display multimedia content. . . simultaneously with the received video.”
As mentioned above, the Examiner finds Kim teaches display of “an
indication of a current dialing state” by disclosing a chat system in which
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“when the request to hook-up is delayed an indication of the delay is
displayed while the dialing-up condition is pending (section [0065]).” Ans.
10. For the “indication of a conversation state” that replaces the dialing state
indication, the Examiner finds that in Kim, “[njaturally, after the hook-up is
made, the chat itself is then active and the delay message removed,” and
“[a]fter the connection in DeWeese (regardless of Kim) the chat parties
know that they are connected when they can hear each other in conversation,
and then see each other in visual communication.” Id.
Appellant replies that the Examiner errs by finding “the displayed
indication of a conversation state is taught in DeWeese when participants
can hear each other.” Reply Br. 3. This contention is unpersuasive. We
note the Examiner finds it is the audio-visual connection that indicates a
conversation state. We agree that providing audio-visual communication (as
taught by DeWeese) in combination with the removal of the “awaiting
connection” message (as taught by Kim) teaches that “the indication of the
current dialing state is replaced by an indication of a conversation state,”
according to the plain meaning of the claim language.
Appellant further argues the Examiner errs because “the claims recite
an explicit state of replacing the indication of a conversation state with the
received video.” Reply Br. 3^4. This argument is not commensurate with
the scope of the claim. There is no requirement for the received video to
replace the indication of a conversation state.
Appellant also contends the audio-visual communication between the
chat parties cannot teach both the “indication of a conversation state” and
the “received video of the remote party.” Id. at 4. This is unpersuasive. The
plain meaning of the claim language does not preclude displaying received
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video as an indication of a conversation state. Absent a recited requirement
to the contrary, a single component may satisfy two different claim
limitations. See In re Kelley, 305 F.2d 909, 915—16 (CCPA 1962) (finding
different claim terms addressing different functions may properly read on
the same element).
Accordingly, we sustain the Examiner’s § 103 rejection of
representative claim 1, and also of claim 9, which Appellant argues together
with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 2
Claim 2 depends from claim 1 and requires activating a “video
shooting unit” and a “sound pickup unit” in response to an answering signal,
and then transmitting sound interlaced with video to the remote party. See
App. Br. 28—29 (Claims App’x). Appellant argues the Examiner errs in
finding DeWeese teaches these requirements, because “[n]o such causation
is disclosed in DeWeese, as the video appears to be manually activated in
accordance with chat settings. DeWeese, Paragraph 0094.” Id. at 23.
Appellant reads DeWeese too narrowly. While DeWeese teaches that
audio and video “may not be desirable for users who prefer the anonymity of
text” when chatting (| 94), an ordinarily skilled artisan would understand
this to teach a selective option for disabling the audio and video. Thus, in a
“standard” video chat without selectively disabled audio and video, we agree
with the Examiner’s finding that DeWeese teaches the microphone and
camera will provide interlaced video automatically in response to answering
a chat request, as recited in claim 2. See Final Act. 7; Ans. 12.
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Accordingly, we sustain the Examiner’s § 103 rejection of
representative claim 2, and also of claim 10, which Appellant argues
together with claim 2. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 3
Claim 3 depends from claim 2 and requires providing “non-
interrupted audio and visual communication with the remote party,” by
transmitting claim 2’s interlaced sound and video to the remote party
simultaneously with displaying video and playing sound received from the
remote party. See App. Br. 29 (Claims App’x). Appellant argues the
Examiner errs in finding DeWeese teaches these requirements because
“there is no indication that these precisely recited steps are performed” in the
cited art. Appellant points to disclosure in DeWeese for the proposition that
“there is no indication that the user unit or set top box of DeWeese is
actually performing these tasks as alleged in the Office Action. Instead, it is
likely that it is the television distribution facility is performing such a task.”
App. Br. 24 (citing DeWeese H 55, 61, 112).
Regardless that DeWeese teaches processing by audio and video
bridges located at a television distribution facility, we agree with the
Examiner that the set top boxes in DeWeese necessarily will receive and
process the sound and video received from a remote party during an audio­
visual chat session to provide the audio and video to the user. Appellant
provides no persuasive argument or evidence for how or why the ordinarily
skilled artisan would not have understood the received audio and video in
DeWeese to be “non-interrupted” while simultaneously sending the
interlaced sound and video of the receiving party back to the remote party,
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as recited in claim 3. Appellant does not persuade us the Examiner errs in
these findings.
Accordingly, we sustain the Examiner’s § 103 rejection of
representative claim 3, and also of claim 11, which Appellant argues
together with claim 3. See 37 C.F.R. § 41.37(c)(l)(iv).
Remaining Claims
Appellant presents no substantive arguments of Examiner error for
claims 4—8, 12—18, 20—23, and 25—29 separate from their parent claims.
Accordingly, for the reasons discussed supra, we sustain the rejection of
claims 4-8, 12-18, 20-23, and 25-29. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the above reasons, we affirm rejection of claims 19-29 under 35
U.S.C. § 102(e) and the rejection of claims 1—18 under § 103(a).
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
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