Ex Parte Smith et al

Patent Trials and Appeals BoardMar 28, 2019

13355925 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/355,925 01/23/2012 98417 7590 03/29/2019 Otterstedt, Ellenbogen & Kammer, LLP P.O. Box 381 Cos Cob, CT 06807-0381 FIRST NAMED INVENTOR Robert Todd 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. TWC 11-55/1033-51 1070 EXAMINER SUN,LIP ART UNIT PAPER NUMBER 2143 MAIL DATE DELIVERY MODE 03/29/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT TODD SMITH and JAMES C. STARK1 Appeal 2018-005 821 Application 13/355,925 Technology Center 2100 Before CARL W. WHITEHEAD JR., BRADLEY W. BAUMEISTER, and DAVID J. CUTITTA II, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-9, 11-18, and 20-26. App. Br. 12-24. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 Appellants list Time Warner Cable Enterprises, LLC as the real party in interest. Appeal Brief filed January 17, 2018 ("App. Br.") 3. 2 Rather than repeat the Examiner's positions and Appellants' arguments in their entirety, we refer to the above-mentioned Appeal Brief, as well as the following documents, for their respective details: the Final Action mailed May 18, 2017 ("Final Act."); the Examiner's Answer mailed March 20, 2018 ("Ans."); and the Reply Brief filed May 21, 2018 ("Reply Br."). Appeal 2018-005821 Application 13/355,925 STATEMENT OF THE CASE Appellants describe the present invention as follows: A plurality of icons are displayed on a companion device having a touch screen interface; the icons can be manipulated by the touch screen interface, and each of the plurality of icons represents a different one of a plurality of audiovisual assets which can be viewed on an external audiovisual device. An input gesture on the touch screen interface is obtained from a user of the companion device, wherein a given one of the icons is flicked in a manner associated with the external audiovisual device. Responsive to the obtaining of the gesture, a signal is dispatched from the companion device. The signal causes the external audiovisual device to access a given one of the plurality of audiovisual assets associated with the given one of the icons. Techniques for other than touch screen devices, and techniques to obtain programs on the companion device, are also provided. Abstract. Independent claim 1, reproduced below with the disputed limitation emphasized, illustrates the claimed invention: 1. A method comprising the steps of: displaying, on a companion device having a touch screen interface, a plurality of icons, which can be manipulated by said touch screen interface, each of said plurality of icons representing a different one of a plurality of audiovisual assets which can be viewed on an external audiovisual device; obtaining, from a user of said companion device, an input gesture on said touch screen interface, wherein said input gesture includes a flick of a focused one of said icons off of a top of said touch screen interface; and responsive to said obtaining of said gesture, dispatching a signal from said companion device, said signal causing said external audiovisual device to access, from at least one of a content data network and an application web server at a remote location from said external audiovisual device, a given one of said plurality of audiovisual assets associated with said focused 2 Appeal 2018-005821 Application 13/355,925 one of said icons, wherein said access of said given one of said plurality of audiovisual assets is independent of said companion device. Claims 1-9, 11-18, and 20-26 stand rejected under 35 U.S.C. Â§ 112(a) (pre-AIA Â§ 112 ,r 1) as failing to comply with the written description requirement. Final Act. 3--4. Claims 1-9, 11-18, and 20-26 stand rejected under 35 U.S.C. Â§ 112(b) (pre-AIA Â§ 112 ,r 2) as indefinite. Final Act. 4--5. Claims 1, 6, 9, and 24 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over King (US 2011/0214061 Al; published Sept. 1, 2011) and Rosenberg (US 2007/0146347 Al; published June 28, 2007). Final Act. 5- 12. Claims 2 and 3 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over King, Rosenberg, and Bayliss (US 8,370,428 B 1; issued Feb. 5, 2013). Final Act. 12-14. Claim 4 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over King, Rosenberg, Bayliss, and Cattani (US 2010/0303021 Al; published Dec. 2, 2010). Final Act. 15-17. Claim 5 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over King, Rosenberg, and Memyk (US 6,496,206 Bl; issued Dec. 17, 2002). Final Act. 18-20. Claim 7 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over King, Rosenberg, and Rieger (US 2011/0138064 Al; published June 9, 2011). Final Act. 20-22. Claim 8 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over King, Rosenberg, Rieger, and Dodd (US 2011/0162018 Al; published June 30, 2011). Final Act. 22-23. 3 Appeal 2018-005821 Application 13/355,925 Claims 11, 12, 16-18, 25, and 26 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over King, Dodd, and Rieger. Final Act. 23-33. Claims 13, 14, 21, and 22 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over King, Dodd, Rieger, and Bayliss. Final Act. 33. Claims 15 and 23 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over King, Dodd, Rieger, Bayliss, and Cattani. Final Act. 33- 34. Claim 20 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over King, Dodd, Rieger, Memyk, Belimpasakis (US 2009/0259515 A 1; published Oct. 15, 2009), and Greeff (US 2009/0293070 Al; published Nov. 26, 2009). Final Act. 34--39. We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential). THE REJECTIONS AND CONTENTIONS The disputes for all of the rejections on appeal relate to the meaning of the term "independent," as set forth in the last clause of independent claims 1, 11, 18, and 24--26: "wherein said access of said given one of said plurality of audiovisual assets is independent of said companion device." This clause does not appear in the originally filed claims, but instead was added to the claims in the Amendment and Response to Final Office Action that was filed December 5, 2016 ("Dec. 2016 Amendment"). Appellants added this language to distinguish over the combination of King and Rosenberg. See Dec. 2016 Amendment 12-15. 4 Appeal 2018-005821 Application 13/355,925 The Examiner determines that the claims lack adequate written- description because the disputed clause is not supported by the originally filed Specification. Final Act. 3--4. In the Examiner's opinion, Appellants' Specification discloses the exact opposite-"that the external audiovisual device accessing the audiovisual assets is dependent on the companion device." Id. at 3. The Examiner explains, by way of example: [Appellants'] Fig. 11 illustrates that icons representing audiovisual assets are first displayed on the companion device before [the] user can select[] one of the icon[ s] and stream[] the corresponding audiovisual asset on the external audiovisual device. In other words, streaming the selected audiovisual asset on the external audiovisual device is carried out through the companion device by the companion device gaining access to the plurality of audiovisual assets first. Final Act. 3--4. Because the Examiner finds that Appellants' disclosure contradicts what is recited in the amended claims, the Examiner further determines that the metes and bounds of claim protection being sought cannot be reasonably ascertained. Id. at 4--5. The Examiner, therefore, rejects the claims as indefinite. Id. For the purposes of examination, though, the Examiner interprets the disputed limitation to mean the exact opposite of what it recites-"wherein said access of said given one of said plurality of audiovisual assets is dependent of said companion device." Id. at 5 ( emphasis added). The Examiner then proceeds to reject the claims as obvious over various combinations of cited art based upon this claim interpretation. See, e.g., Ans. 43--44 (wherein the Examiner reaffirms that the art rejections are based on the "Examiner's interpretation presented in the previous office action" and in light of the written-description and indefiniteness rejections); see also 5 Appeal 2018-005821 Application 13/355,925 id. at 45-46 (wherein the Examiner finds that the claims read on the combination of King and Rosenberg because King teaches "wherein said access of said given one of said plurality of audiovisual assets is dependent of said companion device" (citing King ,r 57)). Appellants argue that the Examiner errs in interpreting the claim term "independent" to mean "dependent" because such an interpretation is unreasonable. App. Br. 12. Appellants assert that the claim should not be interpreted essentially to require that "the external audiovisual device [selects] the audiovisual asset independent of the companion device." Id. Appellants urge that the claim language instead requires that once signaled by the companion device, the audiovisual equipment subsequently accesses the asset independent of the companion device: the independence of the external audiovisual device is specified only for the "access of said given one of said plurality of audiovisual assets." Elsewhere, the claim clearly specifies that "responsive to said obtaining of said gesture, dispatching a signal from said companion device, said signal causing said external audiovisual device to access." It should be clear that "causing said external audiovisual device to access" and the actual "access of said given one of said plurality of audiovisual assets" are distinct in the claims. Id. at 12-13. Appellants also assert that this interpretation is reasonably supported by their originally filed Specification: [T]he drawings and specification clearly support "access of said given one of said plurality of audiovisual assets" independent of the companion device ( e.g., see page 28, lines 18-30, "the external audiovisual device accesses the given one of the plurality of audiovisual assets associated with the given one of 6 Appeal 2018-005821 Application 13/355,925 the icons over a hybrid fiber coaxial network 101 via a radio frequency quadrature amplitude modulation scheme"). App. Br. 13. PRINCIPLES OF LAW "Before considering the rejections ... , we must first [ determine the scope of] the claims .... " In re Geerdes, 491 F.2d 1260, 1262 ( CCP A 197 4 ). During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). "A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so." Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005); see also Mangosoft, Inc. v. Oracle Corp., 525 F.3d 1327, 1330-31 (Fed. Cir. 2008) (rejecting a claim construction that "ascribes no meaning to the term ... not already implicit in the rest of the claim"). ANALYSIS The Examiner's interpretation of the term "independent" is not reasonable. The term's antonym, "dependent," is an indisputably common word, presumably within the vocabulary of a claim drafter who opts to employ the claim term "independent." It is fairly reasonable to conclude that if Appellants intended to claim that the access of assets is dependent of the companion device, Appellants would have claimed just that. Furthermore, the claims already recite that the signal from the companion device causes the external audiovisual device to access the asset. 7 Appeal 2018-005821 Application 13/355,925 As such, the Examiner's interpretation of the claim to mean that the access must be dependent on the companion device merely due to the fact that the audiovisual device received a signal from the companion device is disfavored because such an interpretation effectively renders the entirety of the disputed clause superfluous. See Mangosoft, 525 F.3d at 1330-31 (rejecting a claim construction that "ascribes no meaning to the term ... not already implicit in the rest of the claim"). Compared to the Examiner's adopted interpretation and its concomitant problems, Appellants' proffered interpretation is more reasonable. That is, we understand the claims to require the audiovisual device to be dependent upon the companion device for obtaining the dispatched signal that causes the external audiovisual device to access the asset. But once the external audiovisual device receives the signal from the companion device indicating what asset needs to be accessed, the audiovisual device retrieves the asset independent of the companion device, i.e., without obtaining the asset from or via the companion device. Such an interpretation is consistent with the plain language of the claims and is supported sufficiently by Appellants' Specification. See, e.g., Spec. 28: 18- 30, cited in Final Act. 13. For the foregoing reasons, Appellants have persuaded us of error in the Examiner's interpretation of the independent claims. As such, Appellants also have persuaded us of error in the written-description, indefiniteness, and obviousness rejections of the claims, all of which rejections the Examiner issues based upon the noted improper interpretation. 8 Appeal 2018-005821 Application 13/355,925 DECISION The Examiner's decision rejecting claims 1-9, 11-18, and 20-26 is reversed. REVERSED 9