Ex Parte SMITH

Patent Trials and Appeals Board

Jan 22, 2019

13093036 - (D) (P.T.A.B. Jan. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/093,036 04/25/2011
27562 7590 01/24/2019
NIXON & V ANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Darren C. SMITH
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.
MJS-723-3064 7949
EXAMINER
DUCKWORTH, JIANMEI F
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
01/24/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARREN C. SMITH
Appeal 2018-005541 1
Application 13/093,036
Technology Center 2100
Before JAMES R. HUGHES, ERIC S. FRAHM, and
JOHN A. EV ANS, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, Nintendo Co. Ltd. is the real party in interest
(App. Br. 3).
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Application 13/093,036
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 10, 11, 13, 15, and 20-23. Claims 4--9, 12, 14, and 16-18 have
been canceled. Claims 19 and 24--35 are allowable (see Final Act. 24--27).
Therefore, only claims 1-3, 10, 11, 13, 15, and 20-23 are before us on
appeal. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Appellant's Disclosed Invention
Appellant discloses a method for accessing a web page to present
online content to users by detecting cues ( claim 1 ), a system having a
processor to perform the method ( claim 10), and a non-transitory computer
readable medium storing a program executed on the processor to perform the
method (claim 13) (Title; Abs.; Spec. ,r,r 2, 3). The cues can be audio cues
(Spec. ,r,r 13, 32) or radio frequency identification (RFID) cues (Spec. ,r,r 14,
33), and can be contained in a television program or song (Spec. ,r 13).
Exemplary Claims
Claims 1, 10, and 13 are independent, and each recite accessing a web
page in response to detecting a cue contained in received audio. The
detected cue "comprises one or more first tones followed by one or more
second tones," and "the one or more first tones identify the one or more
second tones as comprising cue information" (claims 1, 10, 13). An
understanding of the invention can be derived from a reading of exemplary
claims 1 and 23, which are reproduced below with emphases added:
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Claim 1. A method of accessing a web page using a
handheld computing device being carried by a user, comprising:
receiving, using a microphone of the handheld computing
device, audio output from speakers for electronic equipment,
wherein the audio output includes content for listening by a user
and one or more cues different from the content;
detecting, by a processor of the handheld computing
device, a cue from the one or more cues in the received audio
output;
when the cue is detected while a game is being played on
the handheld computing device, changing an aspect of the game
being played in response to the detecting; and
when the cue is detected while a game is not being played
on the handheld computing device:
determining, by the processor accessing specified
data associating cues with web addresses, a web address based
on the detected cue; and
automatically connecting to a web page using the
web address,
wherein the detected cue comprises one or more first tones
followed by one or more second tones, and wherein the one or
more first tones identify the one or more second tones
as comprising cue information.
Claim 23. A method according to claim 1, wherein the
frequencies at which the one or more cues are arranged are in the
lower or higher ends of the audio frequency range
extending/ram 20 Hz to 20 kHz.
The Examiner's Rejections
(1) The Examiner rejected claims 1, 3, 10, 11, 15, and 2 0 under
35 U.S.C. § I03(a) as being unpatentable over the combination of Philyaw
(US 6,636,896 Bl; issued Oct. 21, 2003), Tomes (US 2005/0222846 Al;
published Oct. 6, 2005), and Lindahl (US 2010/0088100 Al; published
April 8, 2010). Final Act. 3-14.
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(2) The Examiner rejected claim 2 under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Philyaw, Tomes, Lindahl, and
Vandermeijden (US 2004/0132431 Al; published July 8, 2004). Final Act.
15.
(3) The Examiner rejected claim 13 under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Philyaw, Tomes, Lindahl, and
Vandermeijden. Final Act. 15-21.
(4) The Examiner rejected claim 21 under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Philyaw, Tomes, Lindahl, and
Andersen (US 2003/0066089 Al; published April 3, 2003). Final Act. 21-
22.
(5) The Examiner rejected claim 22 under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Philyaw, Tomes, Lindahl, and Barker
(US 2003/0126461 Al; published July 3, 2003). Final Act. 22-23.
(6) The Examiner rejected claim 23 under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Philyaw, Tomes, Lindahl, and Sutton
(US 2006/0281543 Al; published Dec. 14, 2006). Final Act. 23-24.
Issues on Appeal
Based on Appellant's arguments in the briefs (App. Br. 9-17; Reply
Br. 2-9) in light of the Examiner's response to Appellant's arguments in the
Appeal Brief (Ans. 23-35), the following two principal issues are presented
on appeal:
(1) Did the Examiner err in rejecting claims 1, 3, 10, 11, 13, 15, and
20 under 35 U.S.C. § I03(a) as being unpatentable over the base
combination of Philyaw, Tomes, and Lindahl because the combination fails
to teach or suggest detecting "cues" used for "accessing a web page,"
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"wherein the detected cue comprises one or more first tones followed by one
or more second tones, and wherein the one or more first tones identify the
one or more second tones as comprising cue information," as recited in
representative claim 1?
(2) Has Appellant shown the Examiner erred in rejecting dependent
claim 23 for obviousness over Philyaw, Tomes, Lindahl, and Sutton?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments in the Appeal Brief (App. Br. 9--17) and the Reply Brief (Reply
Br. 2-9) that the Examiner has erred. We disagree with Appellant's
arguments.
Representative Claim 1
We disagree with the Appellant's conclusions as to representative
independent claim 1. With regard to claim 1, we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Final Act. 3-9), and (2) the reasons set forth by the
Examiner in the Examiner's Answer in response to the Appellant's Appeal
Brief (Ans. 2-7 and 23-32). We highlight and amplify certain teachings and
suggestions of the references as follows.
With regard to claim 1, the Examiner relies on Philyaw (see Final
Act. 5 citing Philyaw cols. 26, 27) as teaching audio cues in the form of
tones as recited in claim 1, and not Tomes and/or Lindahl. Philyaw's tones
meet the requirements of claim 1 as to being detected and being different
from other audio content (e.g., audio output in the form of a song), therefore
we agree with the Examiner's findings in this regard (that Philyaw's tones
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teach the recited cues). We also agree with the Examiner (see Final Act. 5-
6; Ans. 3--4, 25-26) that Philyaw's two audio tones (i.e., cues) in the form of
an unencoded audio portion 2602 and an encoded audio portion 2604 meet
the disputed limitation at the end of claim 1, namely "wherein the detected
cue comprises one or more first tones followed by one or more second tones,
and wherein the one or more first tones identify the one or more second
tones as comprising cue information." See Philyaw col. 26, 1. 42---col. 27, 1.
56.
The Examiner then relies on Tomes as teaching a handheld computing
device carried by a user (see Final Act. 6 and Ans. 4 citing Tomes ,r 8), and
Lindahl as teaching suitable actions being taken based on a game playing
state or contextual information (see Final Act. 7 and Ans. 5---6 citing Lindahl
,r,r 6, 7, 9, 60, 62). Again, we agree with the Examiner's findings in this
regard.
In sum, we agree with the findings made by the Examiner with regard
to the individual references (Final Act. 3-9; Ans. 2-7), and we also agree
with the Examiner's finding (Final Act. 6-9; Ans. 4--7, 23-32) that it would
have been obvious to combine Philyaw's cues/tones with Tomes handheld
computing device and Lindahl's suitable actions taken based on a game
playing state or contextual information. Further, Appellant has not explicitly
disputed the Examiner's combinability findings as being improper or
unreasonable.
We note that each reference cited by the Examiner must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(finding one cannot show non-obviousness by attacking references
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individually where the rejections are based on combinations of references).
In this light, Appellant's arguments as to representative independent claim 1
(App. Br. 9--12; Reply Br. 2---6) concerning the individual shortcomings in
the teachings of Philyaw, Tomes, and Lindahl are not persuasive, and are not
convincing of the non-obviousness of the claimed invention set forth in
representative independent claim 1. Specifically, Appellant's arguments
premised on the voice commands of Tomes and/or Lindahl are not
persuasive, since the Examiner relies upon Philyaw's tones as the cues, and
not the voice commands of Tomes and/or Lindahl.
The Examiner has relied upon the combination of Philyaw, Tomes,
and Lindahl as teaching or suggesting the method of accessing web pages
using detected cues in audio content as recited in claim 1. Based on the
foregoing, Appellant's contentions as to the individual references are not
persuasive of Examiner error with regard to representative claim 1.
Appellant's contentions (App. Br. 13-14; Reply Br. 6-7) that the
Examiner's obviousness determination as to claim 1 is hinged upon
impermissible hindsight are unpersuasive, as Appellant's arguments in this
regard are premised on the false assumption that one of ordinary skill in the
art would have replaced Philyaw's RF tones with the voice commands of
Tomes and/or Lindahl. To the contrary, and as stated above, the Examiner
relies on Philyaw for the recited tones (i.e., cues in the form of audio or RF
tones), and Tomes and Lindahl for other salient limitations of claim 1.
In view of the foregoing, we sustain the Examiner's obviousness
rejection of representative claim 1, as well as claims 3, 10, 11, 15, and 20
grouped therewith.
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Claim 13 Separately Argued
With regard to independent claim 13 separately argued (see App. Br.
15-16), Appellant makes similar arguments concerning the "cue" limitations
as presented for claim 1, and adds that V andermeij den fails to cure the
deficiencies of the base combination. Appellant does not dispute the
Examiner's reliance on Vandermeijden (see Vandermeijden ,r 22) as
teaching the provision of an alert in response to obtaining access to a
website, as recited in claim 13 (see Final Act. 19; Ans. 17). For the same
reasons provided for claim 1 discussed supra, we also find Appellant's
arguments for claim 13 unpersuasive. In view of the foregoing, we also
sustain the Examiner's obviousness rejection of claim 13.
Claim 23 Separately Argued
With regard to dependent claim 23 separately argued, we agree with
the Examiner's conclusion that the combination of Philyaw, Tomes, Lindahl,
and Sutton teaches or suggests cues arranged in low or high frequencies of
the audio range extending from 20 Hz to 20 kHz as recited (see Final Act.
23-24; Ans. 32-34). Appellant's arguments that (i) Philyaw, Tomes, and/or
Lindahl would not operate properly with Sutton (see App. Br. 14--15); and
(ii) the Examiner relies on voice commands, and not tones, as teaching the
recited cues (Reply Br. 7-8), are unpersuasive because Philyaw (see col. 27,
11. 53-56) discloses cues in the form of a tone arranged "within the audible
range" (col. 27, 11. 54--55).
In view of the foregoing, Appellant has not shown the combination of
applied references teaches or suggests "the frequencies at which the one or
more cues are arranged are in the lower or higher ends of the audio
frequency range extending from 20 Hz to 20 kHz," as recited. Further,
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Appellant's argument that Sutton would not work properly with the base
combination of Philyaw, Tomes, and Lindahl is not persuasive, in that the
disputed features are taught by Philyaw, Tomes, and Lindahl. The PTAB
may rely on less than all of the references applied by the Examiner in an
obviousness rationale without designating it as a new ground of rejection. In
re Boyer, 363 F.2d 455,458 n.2 (CCPA 1966) (citing In re Bush, 296 F.2d
491,496 (CCPA 1961)). Finally, Appellant has not disputed the Examiner's
motivation and rationale provided as to the combination of Philyaw, Tomes,
and Lindahl (see Final Rej. 6-9; Ans. 4--7, 30-32).
In view of the foregoing, we sustain the Examiner's rejection of claim
23.
Obviousness Rejections of Claims 2, 21, and 22
Based on Appellant's failure to address the Examiner's prima facie
case of obviousness as to (i) claim 2 over the base combination of Philyaw,
Tomes, and Lindahl, further in view of Vandermeijden; (ii) claim 21 over
the same base combination further in view of Andersen; and (iii) claim 22
over the same base combination further in view of Barker, Appellant has
failed to show that the Examiner erred in determining that the base
combination taken with any of Vandermeijden, Andersen, or Barker teaches
or suggests the subject matter recited in claims 2, 21, and/or 22.
Accordingly, no issue is presented as to these rejections, and we summarily
sustain the Examiner's obviousness rejections of claims 2, 21, and 22. See
37 C.F.R. § 4I.37(c)(l)(iv) (requiring a statement in the briefs as to each
ground of rejection presented by Appellant for review and stating that
arguments not presented in the briefs will be refused consideration).
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CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1, 3, 10, 11, 13, 15,
and 20 under 35 U.S.C. § 103(a) as being unpatentable over the base
combination of Philyaw, Tomes, and Lindahl because the combination
teaches or suggests detecting "cues" used for "accessing a web page,"
"wherein the detected cue comprises one or more first tones followed by one
or more second tones, and wherein the one or more first tones identify the
one or more second tones as comprising cue information," as recited in
representative claim 1.
(2) The Examiner did not err in rejecting claim 13 as being
unpatentable under 35 U.S.C. § 103(a) because the base combination for the
same reasons provided as to representative claim 1 regarding the disputed
"cues" limitation.
(3) Appellant has not shown the Examiner erred in rejecting claim 23
as being unpatentable under 35 U.S.C. § 103(a) over the base combination
taken with Sutton, because the base combination teaches or suggests "the
frequencies at which the one or more cues are arranged are in the lower or
higher ends of the audio frequency range extending from 20 Hz to 20 kHz,"
as recited.
( 4) Appellant has not shown the Examiner erred in rejecting (i) claim
2 over the base combination of Philyaw, Tomes, and Lindahl, further in view
of Vandermeijden; (ii) claim 21 over the same base combination further in
view of Andersen; and (iii) claim 22 over the same base combination further
in view of Barker.
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DECISION
The Examiner's rejections of claims 1-3, 10, 11, 13, 15, and 20-23
under 35 U.S.C. § 103(a) 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)(l)(iv).
AFFIRMED
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