SETOS FAMILY TRUST

Patent Trials and Appeals Board

Mar 28, 2022

2022001939 (P.T.A.B. Mar. 28, 2022)

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. 16/233,389 12/27/2018 Andrew SETOS 0012637USU/4642 9931 27623 7590 03/28/2022 OHLANDT, GREELEY, RUGGIERO & PERLE, LLP ONE LANDMARK SQUARE, 10TH FLOOR STAMFORD, CT 06901 EXAMINER SHANG, ANNAN Q ART UNIT PAPER NUMBER 2424 MAIL DATE DELIVERY MODE 03/28/2022 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 ANDREW SETOS _______________ Appeal 2022-001939 Application 16/233,389 Technology Center 2400 _______________ Before MARC S. HOFF, JAMES W. DEJMEK, and MATTHEW J. McNEILL, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Non-Final Rejection of claims 1, 7-14, 16-20, and 22-24. Appellant has canceled claims 2-6, 15, and 21. See Appeal Br. 14-19. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). See Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994) (precedential). We affirm and enter a New Ground of Rejection. 1 Throughout this Decision, we use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2021). Appellant identifies the Setos Family Trust as the real party in interest. Appeal Br. 2. Appeal 2022-001939 Application 16/233,389 2 STATEMENT OF THE CASE Introduction Appellant’s disclosed and claimed invention generally relates to providing temporary access by a network-enabled viewing appliance to the content and settings of a temporary user based in part on a determination that the temporary user (i.e., the user’s mobile device) and the network-enabled viewing appliance are within a predetermined distance of each other. Spec. 1, 3-4, Abstract. In a disclosed embodiment, the system comprises a mobile device (e.g., a smartphone), a network-enabled viewing appliance (e.g., a smart TV), and a platform server. Spec. 3, Fig. 1. Appellant describes that the location of the mobile device and the location of the network-enabled viewing appliance are communicated to the platform server independently. Spec. 6. That is, the mobile device and the network-enabled viewing appliance do not share their respective locations with each other. An application executing on the platform server determines whether the mobile device and network-enabled viewing appliance are within a set distance from one another by comparing the two received locations. Spec. 6. If the mobile device and network-enabled viewing appliance are within the set distance, the platform server provides (or otherwise allows) content associated with the user of the mobile device (i.e., a temporary user) to be displayed on the network-enabled viewing appliance. Spec. 6. If the distance between the mobile device and network-enabled viewing appliance is greater than a determined threshold (i.e., the set distance), the content associated with the user of the mobile device may not be displayed on the network-enabled viewing appliance. Spec. 6. Appeal 2022-001939 Application 16/233,389 3 According to the Specification, requiring the mobile device and the network-enabled viewing appliance to communicate their respective locations directly to the server, and not to each other, allows for “a far more robust relative proximity [determination] of the two devices.” Spec. 8. In addition, according to the Specification, relying on two independent determinations of location makes it “significantly more challenging” to spoof the location information of two different devices (i.e., the mobile device and the network-enabled viewing appliance), which militates against potential fraudulent activity. Spec. 8-9. Claim 1 is representative of the subject matter on appeal and is reproduced below with the disputed limitations emphasized in italics: 1. A system for allowing a changing of settings and a change visual appearance of a network-enabled viewing appliance from settings and a visual appearance associated with an original subscriber to settings and a visual appearance associated with a temporary subscriber, comprising: a server application residing on a platform server; an appliance application residing on the network-enabled viewing appliance, wherein the network-enabled viewing appliance is configured with the settings and the visual appearance associated with the original subscriber, and wherein the original subscriber is not the temporary subscriber; and a mobile device application residing on a mobile device, wherein the network-enabled viewing appliance and the mobile device each have location services thereon, wherein the location services on the network-enabled viewing appliance and the mobile device each communicate their location separately and directly to the server application, wherein the server application determines a distance between the network-enabled viewing appliance and the mobile Appeal 2022-001939 Application 16/233,389 4 device by comparing the location of each and determines whether the distance is within a set distance, wherein, when the server application determines that the distance is within the set distance, the server application changes the settings and visual appearance of the network-enabled viewing appliance so that the network-enabled viewing appliance takes on the settings and visual appearance associated with the temporary subscriber and the settings and visual appearance associated with the original subscriber are not available, wherein, when the server application determines that the distance is not within the set distance, the server application does not change the settings and visual appearance of the network- enabled viewing appliance to the settings and visual appearance associated with the temporary subscriber, so that the settings and visual appearance of the network-enabled viewing appliance remain the settings and visual appearance associated with the original subscriber, and wherein there is no communication between the network- enabled viewing appliance and the mobile device, and that there is no communication between the network-enabled viewing appliance and the mobile device provides a more secure communication than a system where there is direct communication between a network-enabled viewing appliance and the mobile device. The Examiner’s Rejections 1. Claims 1, 7-14, 16-20, and 22-24 stand rejected under 35 U.S.C. § 112(b) as being indefinite. Non-Final Act. 2-3. 2. Claims 1, 7-14, 16-20, and 22-24 stand rejected under 35 U.S.C. § 103 as being unpatentable over Buehl (US 2011/0289537 A1; Nov. 24, 2011); Kareeson et al. (US 2016/0044385 A1; Feb. 11, 2016) (“Kareeson”); and Shimy et al. (US 2011/0069940 A1; Mar. 24, 2011) (“Shimy”). Non-Final Act. 5-12. Appeal 2022-001939 Application 16/233,389 5 ANALYSIS2 Rejection under 35 U.S.C. § 112(b) The Examiner rejects the independent claims (as well as the claims that depend therefrom) under 35 U.S.C. § 112(b) as being indefinite. Non- Final Act. 2-3. Independent claims 1, 14, and 22 each recite “that there is no communication between the network-enabled viewing appliance and the mobile device provides a more secure communication than a system where there is direct communication between a network-enabled viewing appliance and the mobile device.”3 See, e.g., claim 1. The Examiner determines that there “appears to [be] no support in Applicant’s disclosure” for this limitation. Non-Final Act. 2-3; see also Ans. 9-10. More particularly, the Examiner states that the Specification “merely indicates that the distance is not determined by direct communication between the two [(i.e., the network- enabled viewing appliance and the mobile device)]” but fails to describe how that provides more security as claimed.4 Ans. 9-10. 2 Throughout this Decision, we have considered the Appeal Brief, filed October 8, 2021 (“Appeal Br.”); the Reply Brief, filed February 11, 2022 (“Reply Br.”); the Examiner’s Answer, mailed January 13, 20220 (“Ans.”); and the Non-Final Office Action, mailed June 23, 2021 (“Non-Final Act.”), from which this Appeal is taken. 3 As a matter of claim construction, we note that this clause merely recites the result of the claimed limitation of there being no communication between the network-enabled viewing appliance and the mobile device. Claims differing from the prior-art by no more than the recitation of a result do not distinguish those claims over the prior art. Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376-77 (Fed. Cir. 2001). 4 Although the Examiner rejects the claims under 35 U.S.C. § 112(b), the Examiner’s reasoning for rejecting the claims appears to be based on 35 U.S.C. § 112(a) for lack of written description support. However, a rejection under 35 U.S.C. § 112(a) is not before us. Appeal 2022-001939 Application 16/233,389 6 The test for definiteness under 35 U.S.C. § 112(b) is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). During prosecution, “‘[a] claim is indefinite when it contains words or phrases whose meaning is unclear.’” Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (quoting Packard, 751 F.3d at 1310, 1314); see In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (“claims are required to be cast in clear-as opposed to ambiguous, vague, indefinite- terms”) (per curiam). Contrary to the Examiner’s conclusion, we determine that the identified clause is not indefinite. Rather, the words and phrases are understandable to those skilled in the art. That is, an ordinarily skilled artisan would understand the claims merely recite a result of increased security in a system in which two devices (i.e., a networked-enabled viewing apparatus and a mobile device) do not communicate with each other as compared to a system in which the devices do communicate with each other. For the reasons discussed supra, we do not sustain the Examiner’s rejection of claims 1, 7-14, 16-20, and 22-24 under 35 U.S.C. § 112(b) as being indefinite. Rejection under 35 U.S.C. § 103 Appellant asserts that each of the independent claims requires that there is “no communication between the viewing appliance and the mobile device,” the so-called “no communication feature.” Appeal Br. 7-9 (emphasis and internal quotations omitted); Reply Br. 2-3. Appellant argues Appeal 2022-001939 Application 16/233,389 7 that Shimy, as relied on by the Examiner describes communication between the media device (i.e., the viewing appliance) and a user’s smart device (i.e., mobile device). Appeal Br. 7-8. In particular, Appellant argues Shimy teaches the media device comprises detection circuitry that detects a user device via RFID, Bluetooth®, or WiFi, “which are all proximity-type, distance-limited communication methods, and require direct communication between the television and user device.” Appeal Br. 8 (citing Shimy ¶ 51). As such, Appellant argues that all of the references disclose communication between the network-enabled viewing appliance and the mobile device, whereas “[t]he lack of communication between the claimed network-enabled viewing device and smart device in the claimed present invention is an important and nonobvious difference.” Appeal Br. 9. Shimy describes the media device may comprise a detection mechanism to detect a user within a set range of the media device. See, e.g., Shimy ¶¶ 4, 10. Moreover, Shimy teaches that the detection mechanism may detect the presence of a user within a set range of the media device via various approaches. See, e.g., Shimy ¶¶ 43, 50-53, 85. For example, Shimy describes detecting a user is nearby “by using any suitable biometric recognition technique, such as, facial recognition, heat signature recognition, odor recognition, scent recognition, shape recognition, voice recognition, behavioral recognition, or any other suitable biometric recognition technique.” Shimy ¶ 50, Fig. 6. Shimy also describes the detecting circuitry may use palm, fingerprint, and/or retinal readers to detect and/or identify users. Shimy ¶ 52. In addition, Shimy describes the detecting circuitry may include one or more microphones or cameras to capture audio of visual information from a user and detect a user’s distance from the media device Appeal 2022-001939 Application 16/233,389 8 based on triangulating the received input. Shimy ¶¶ 52-53. Alternatively, Shimy describes that the detecting circuitry “may be capable of” detecting a user based on identifying a mobile device associated with the user by electronic communication between the media device and the mobile device. Shimy ¶ 51. Contrary to Appellant’s assertions, we do not find that Shimy requires communication between the media device and a mobile device to determine whether the user and/or user’s mobile device is within a set distance of the media device. Rather, by using permissive language as to what the media device may comprise, Shimy contemplates (and reasonably suggests) that the media device may not include a detection mechanism that communicates with the user’s mobile device. As discussed above, this is supported by the various alternative mechanisms, such as biometric recognition, that do not require communication between the media device and the user’s mobile device. Appellant also argues that the prior art fails to teach that when the network-enabled viewing appliance takes on the settings and visual appearance associated with the temporary subscriber, the setting and visual appearance associated with the original subscriber are not available. Appeal Br. 9-10; Reply Br. 3-4. In particular, Appellant argues that Buehl may suggest providing VOD (Video on Demand) content to a new user, but fails to teach that the network-enabled viewing appliance takes on the settings and visual appearance associated with a temporary subscriber and that the settings and visual appearance associated with the original subscriber are not available. Appeal Br. 10; Reply Br 3. Additionally, Appellant argues that Shimy merely changes the current display content based on which users are Appeal 2022-001939 Application 16/233,389 9 viewing the appliance. Reply Br. 4. Further, Appellant asserts that Shimy does not “personalize the settings of the appliance or render any user’s content unavailable.” Reply Br. 4. We disagree. Shimy expressly teaches that in some embodiments, when the media device detects and identifies a user, “[t]he device may log a detected and/or identified user into the device and utilize profiles and/or information associated with the user to, for example, tailor media content for the logged in user.” Shimy ¶ 81; see also Shimy ¶¶ 112-114 (describing restricting a detected (i.e., temporary) user’s access to content), 159-161, 170-171 (describing that when a (temporary) user is detected, user data (such as content and device configuration) associated with the user is transferred to the media device), Figs. 5, 7-8, 13, 16. Contrary to Appellant’s assertions, we find that Shimy teaches changing the setting and visual appearance of a networked-enabled viewing appliance to the settings and visual appearance associated with a detected (i.e., temporary) subscriber and that when the settings and visual appearance are changed, the settings and visual appearance associated with an original subscriber (i.e., user) are not available. For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103. For similar reasons, we also sustain the Examiner’s rejection of independent claims 14 and 22, which recites similar limitations and were not argued separately. See Appeal Br. 7-10; see also 37 C.F.R. § 41.37(c)(1)(iv). In addition, we sustain the Examiner’s rejection of claims 7-13, 16-20, 23, and 24, which depend directly or indirectly Appeal 2022-001939 Application 16/233,389 10 therefrom and were not argued separately with particularity. See Appeal Br. 7-10; see also 37 C.F.R. § 41.37(c)(1)(iv). NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1, 7-14, 16-20, and 22-24 under 35 U.S.C. § 112(a) for lack of written description support. Independent claims 1, 14, and 22 each recite: wherein there is no communication between the network-enabled viewing appliance and the mobile device, and that there is no communication between the network-enabled viewing appliance and the mobile device provides a more secure communication than a system where there is direct communication between a network-enabled viewing appliance and the mobile device. See, e.g., claim 1 (emphasis added). To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that Appellant possessed the claimed invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically, the description must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed” and the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed. Ariad Pharms., Inc., 598 F.3d at 1351 (internal quotations and citations omitted). Appeal 2022-001939 Application 16/233,389 11 In addition, “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012); but see MPEP § 2173.05(i) (explaining “the mere absence of a positive recitation in a patent specification is not a basis for exclusion consistent with written description requirements”). As an initial matter, we note that the claims were amended to include the so-called “no communication feature.” See Amdt. 2-3 (filed December 30, 2020); Amdt. 2-3 (filed April 1, 2021); Amdt. 2-3 (filed May 4, 2021). In addition, we note that in addition to the so-called no communication feature, the independent claims already recite that “the location services on the network-enabled viewing appliance and the mobile device each communicate their location separately and directly to the server application.” See, e.g., claim 1. The separate and direct communication of location information from the network-enabled viewing appliance and mobile device to the server application (executing on the platform server) is supported by the Specification. See Spec. 6. Moreover, we find adequate written description support that there be no direct communication between the network-enabled viewing appliance and the mobile device of their respective location information. See Spec. 8-9 (explaining that by providing two independent determinations of location, the system is more robust and less susceptible to fraudulent activity). However, we do not find written description support for there being no communication at all between the network-enabled viewing appliance and mobile device, as broadly recited in the independent claims. As discussed, the Specification only provides Appeal 2022-001939 Application 16/233,389 12 support for the proscription of directly communicating between the network- enabled viewing appliance and the mobile device of their respective location information. For the reasons discussed supra, we newly reject independent claim 1 under 35 U.S.C. § 112(a) for lack of written description support. For similar reasons we also newly reject under 35 U.S.C. § 112(a) independent claims 14 and 22, which recite similar limitations. In addition, we newly reject, under 35 U.S.C § 112(a), dependent claims 7-13, 16-20, 23, and 24, which inherit the deficiencies of their respective base claims. CONCLUSIONS We reverse the Examiner’s decision rejecting claims 1, 7-14, 16-20, and 22-24 under 35 U.S.C. § 112(b). We affirm the Examiner’s decision rejecting claims 1, 7-14, 16-20, and 22-24 under 35 U.S.C. § 103. We enter a new ground of rejection rejecting claims 1, 7-14, 16-20, and 22-24 under 35 U.S.C. § 112(a) for lack of written description support. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 7-14, 16-20, 22-24 112 Indefiniteness 1, 7-14, 16-20, 22-24 1, 7-14, 16-20, 22-24 103 Buehl, Kareeson, Shimy 1, 7-14, 16- 20, 22-24 Appeal 2022-001939 Application 16/233,389 13 Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 7-14, 16-20, 22-24 112 Written Description 1, 7-14, 16-20, 22-24 Overall Outcome 1, 7-14, 16- 20, 22-24 1, 7-14, 16-20, 22-24 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, Appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection Appeal 2022-001939 Application 16/233,389 14 and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended. 37 C.F.R. § 1.136(a)(1)(iv); see 37 C.F.R. § 41.50(f). AFFIRMED; 37 C.F.R. § 41.50(b)