THOMSON Licensing DTV

Patent Trials and Appeals Board

Jan 11, 2022

2020006717 (P.T.A.B. Jan. 11, 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. 15/704,050 09/14/2017 Jun Li 2010P00045 US 8241 14868 7590 01/11/2022 Patent Docketing 200 Bellevue Parkway, Suite 300 Attention: Docketing Wilmington, DE 19809 EXAMINER TRAN, LOI H ART UNIT PAPER NUMBER 2484 NOTIFICATION DATE DELIVERY MODE 01/11/2022 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): docketing@interdigital.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JUN LI, JUN XU, XIAOJUN MA, and JIANFENG CHEN ____________ Appeal 2020-006717 Application 15/704,0501 Technology Center 2400 _____________ Before JEAN R. HOMERE, HUNG H. BUI, and JON M. JURGOVAN, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-6, all of the pending claims. Appeal Br. 15-16 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We affirm.2 1 “Appellant” herein refers to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, Interdigital Madison Patent Holdings is identified as the real party in interest. Appeal Br. 3. 2 We refer to the Appellant’s Appeal Brief filed March 2, 2020 (“Appeal Br.”); Examiner’s Answer mailed April 29, 2020 (“Ans.”); Final Office Action mailed August 29, 2019 (“Final Act.”); and Specification filed August 29, 2019 (“Spec.”). Appeal 2020-006717 Application 15/704,050 2 STATEMENT OF THE CASE Appellant’s claimed subject matter relates to “a video system [shown in Figure 1] that uses the interaction with a visual media [e.g., video clip] on a second device [e.g., portable device] to realize the trick mode for the video playback on a first device [e.g., set-top box (STB/TV)].” Spec. 3:19-22. Figure 1, depicting video system 100 including (1) head-end 11, (2) first device 12 for video playback, and (3) second device 13 for presenting a storybook of video of the first device 12, is reproduced below with additional markings for illustration: Appeal 2020-006717 Application 15/704,050 3 Figure 1 shows video system 10 including (1) head-end 11, (2) first device 12 for video playback, and (3) second (portable) device 13 for presenting a storybook of video of the first device 12. Spec. 4:18-22. According to Appellant, “[a] storybook is a book-like media display containing a collection of pages (slides, images), each of which represents the corresponding video section in the video program displayed on the first device [12]” and, in short, “is a video summary of a video displayed on the first device [12] for user to browse.” Spec. 4:5-9. If the user uses a traditional remote controller to fast forward/backward the movie on the TV, the corresponding progress will also be reflected on the portable device 902 [shown in Figure 9] with the highlight moving forward/backward page by page. On the other hand, user interactions to the pages (key scenes) displayed on the screen of the portable device 902 can realize a scene based trick playback of the movie on the TV. For example, the user can click any of the pages to immediately switch to the corresponding movie section on the TV. In addition, the portable device 902 can also be provided with a menu having several functional buttons to facilitate various trick playback operations. Spec. ¶ 4 (emphasis added). For example, the trick playback functions provided by the portable device 13, via interactions with the STB/TV 12, include: GOTO: by tapping/selecting a page in storybook the user can cause video playback to start from the corresponding scene. NEXT/PREV: by swiping left, respectively right to next respectively previous page in storybook can cause video playback to start from the beginning of the next respectively previous scene. Appeal 2020-006717 Application 15/704,050 4 FF/RW: by swiping repeatedly left respectively right on the storybook, the user can cause video to fast forward / rewind at a speed proportional to the repeating frequency. PLAY/PAUSE: by tapping on PLAY, the user can cause video playback to start . . . to pause on a still image of the corresponding scene. REPEAT: by circling on a page in storybook, the user can cause repeated playback of the corresponding section. SLOW: by slowly sliding on a page in storybook, the user can cause slow playback of the corresponding section. SCOPE: by selecting a start page and an end page in a storybook, the user can make video start and stop at the corresponding scenes. ZOOM: by zooming/focusing on an image page of a storybook, focused zoom is carried out on the video being played back, the center of the zoom can be moved around the display. Spec. 15:21-16:9. Representative Claim Claim 1-the only independent claim on appeal-is reproduced below with disputed limitations emphasized for clarity: 1. A portable device for controlling playback of video data on a first device external to said portable device, comprising: a browser module operative to display a plurality of images on a display of said portable device, each image corresponding to a section of the video data, and to highlight an image corresponding to the section of the video data currently played back by the first device; a communication module coupled to the browser module and operative, in response to a selection of an image among the plurality of images by a user, to transmit a first command to the Appeal 2020-006717 Application 15/704,050 5 first device to play back the video data corresponding to the image selected by the user; and wherein the browser module is further operative to adapt highlighting of the plurality of images in response to a second command received from said first device upon a change of the section of video data currently played back on the first device. Appeal Br. 13 (Claims App.). REJECTIONS AND REFERENCES (1) Claims 1-6 stand rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-11 of US Patent No. 9,866,922 issued to Hua et al. in view of Hua et al. (US 2007/0204238 A1; published Aug. 30, 2007; “Hua”). Final Act. 2-4. (2) Claims 1-6 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act. 7-9. (3) Claims 1-5 [sic, 1-4] stand rejected under 35 U.S.C. § 103 as obvious over the combined teachings of Hua and Gharaat et al. (US 2011/0064386 A1; published Mar. 17, 2011; “Gharaat”). Final Act. 4-8. (4) Claim 5 stands rejected under 35 U.S.C. § 103 as obvious over the combined teachings of Hua, Gharaat, and Hamada et al. (US 2008/0126543 A1; published May 29, 2008; “Hamada”). Final Act. 8. (5) Claim 6 stands rejected under 35 U.S.C. § 103 as obvious over the combined teachings of Hua, Gharaat, and Badger et al. (US 2009/0198607 A1; published Aug. 6, 2009; “Badger”). Final Act. 8. Appeal 2020-006717 Application 15/704,050 6 ANALYSIS Double Patenting Rejection of Claims 1-6 Appellant requests that the obviousness double patenting rejections of claims 1-6 be held in abeyance.3 App. Br. 7.4 Because we do not have in the record before us any substantive arguments from Appellant to rebut or challenge the correctness of the Examiner’s prima facie case of obviousness- type double patenting rejections, we find that Appellant has waived such arguments.5 Therefore, we summarily affirm the Examiner’s rejection of claims 1-6. § 101 Rejection of Claims 1-6 In support of the § 101 rejection, the Examiner finds “the body of the claims lacks definite structure indicative of hardware components” and concludes “the claims as a whole appear to be nothing more than a system of software per se” and, as such, are patent-ineligible under § 101. Final Act. 4. 3 Appellant may not reserve arguments for some later time. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(vii). 4 Cf Ex parte Moncla, Appeal 2009-006448 (BPAI 2010). 5 See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir 2008) (“When the appellant fails to contest a ground of rejection to the Board, section 1.192(c)(7) [(now section 41.37(c)(1)(vii))] imposes no burden on the Board to consider the merits of that ground of rejection. . . . [T]he Board may treat any argument with respect to that ground of rejection as waived.”). See also In re Guess, 2009 WL 1598475 at *1 (Fed. Cir. June 9, 2009) (“Appellants failed to argue that any limitations unique to [the claims] survive [the rejection]. Appellants have therefore waived any such arguments on appeal.”) (citing In re Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004)). Appeal 2020-006717 Application 15/704,050 7 Appellant argues base claim 1 “clearly includes structural features, including but not limited to: 1) ‘portable device [e.g., mobile phone, tablet, laptop] for controlling playback of video data on a first device [e.g., STB/TV] external to said portable device’, 2) ‘a browser module operative to display a plurality of images on a display of said portable device [e.g., mobile phone, tablet, laptop]’, 3) ‘a communication module in response to a selection of an image among the plurality of images by a user’, 4) ‘the communication module to transmit a first command to the first device [e.g., STB/TV]’, 5) and ‘the communication module coupled to the browser module.’” Appeal Br. 7-8. Appellant also argues, even if the invention involves software, “software is not automatically an abstract idea” as long as “claims directed to improvements in computer-related technology” under the Federal Circuit precedent in (1) Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); (2) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); (3) McRO Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016); and (4) Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Id. at 8. We agree with Appellant in part, i.e., Appellant’s base claim 1 recites several structural components, including, for example, [a] portable device [e.g., mobile phone, shown in Figure 1] for controlling playback of video data on a first device [e.g., STB/TV] external to said portable device” and interactions between the portable device [e.g., mobile phone, shown in Figure 1] and the first device [e.g., STB/TV] to realize the trick mode for the video playback on a first device [e.g., STB/TV]. Appeal 2020-006717 Application 15/704,050 8 While the recited “browser module” can be interpreted as a software module, Appellant argues that software per se “is not automatically an abstract idea.” Id. However, the threshold inquiry under 35 U.S.C. § 101 is not whether the claims recite hardware or software components; but rather, whether the claims are patent eligible under the Supreme Court’s two-part Alice/Mayo framework. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012). First, we determine whether a patent claim is directed to a patent- ineligible concept. Alice, 573 U.S. at 217. If so, we then determine whether the claim nonetheless includes an “inventive concept” sufficient to “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 72, 78). There is no need to proceed to the second step, however, if the first step of the Alice/Mayo test yields a determination that the claim is directed to patent-eligible subject matter. The Federal Circuit has described the Alice step-one inquiry as looking at the “focus” of the claims, their “character as a whole,” and the Alice step-two inquiry as looking more precisely at what the claim elements add-whether they identify an “inventive concept” in the application of the ineligible matter to which the claim is directed. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, 822 F.3d at 1335-36; Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). In an effort to achieve clarity and consistency in how the Office applies the Supreme Court’s two-step framework, the Office published revised guidance interpreting governing case law and establishing a Appeal 2020-006717 Application 15/704,050 9 framework to govern all patent-eligibility analysis under Alice and § 101 effective as of January 7, 2019. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50-57 (Jan. 7, 2019) (“2019 Revised Guidance”). 2019 Revised Guidance Under the Revised Guidance, we first look under Alice step 1 or “Step 2A” to whether the claim recites: (1) Prong One: any judicial exceptions, including certain groupings of abstract ideas (i.e., [i] mathematical concepts, [ii] mental processes, or [iii] certain methods of organizing human activity such as a fundamental economic practice or managing personal behavior or relationships or interactions between people); and (2) Prong Two: additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) §§ 2106.05(a)-(c), (e)- (h)).6 See 2019 Revised Guidance, 84 Fed. Reg. at 51-52, 55, Revised Step 2A, Prong One (Abstract Idea) and Prong Two (Integration into A Practical Application). Only if a claim: (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an “inventive concept” under Alice step 2 or “Step 2B.” See 2019 Revised Guidance at 56; Alice, 573 U.S. at 217-18. For example, we look to whether the claim: 1) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or 6 All references to the MPEP are to the Ninth Edition, Revision 08.2017 (rev. Jan. 2018). Appeal 2020-006717 Application 15/704,050 10 2) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 2019 Revised Guidance, 84 Fed. Reg. at 56. Alice/Mayo-Step 1 (Abstract Idea) Step 2A-Prongs 1 and 2 identified in the Revised Guidance Step 2A, Prong One Turning to the first step of the Alice inquiry, the Examiner has not identified that claim 1 is directed to an abstract idea. We have approached Alice step-one inquiry as looking at the “focus” of the claimed advance over the prior art and their “character as a whole.” In conducting that inquiry, we must focus on the language of the [a]sserted [c]laims themselves, considered in light of the specification.” TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1292 (Fed. Cir. 2020). Appellant’s claim 1 recites a “portable device for controlling playback of video data on a first device external to said portable device,” provided with: (1) “a browser module operative to display a plurality of images on a display of said portable device, each image corresponding to a section of the video data, and to highlight an image corresponding to the section of the video data currently played back by the first device;” and (2) “a communication module coupled to the browser module and operative, in response to a selection of an image among the plurality of images by a user, to transmit a first command to the first device to play back the video data corresponding to the image selected by the user;” and (3) “wherein the browser module is further operative to adapt highlighting of the plurality of images in response to a second command received from said first device upon a change of Appeal 2020-006717 Application 15/704,050 11 the section of video data currently played back on the first device. Appeal Br. 13 (Claims App.) (emphasis added). Figure 1, supra, shows video system 10 including (1) head-end 11, (2) first device (STB/TV) 12 for video playback, and (3) portable device 13 for presenting a storybook of video of the first device (STB/TV) 12, but requires user interaction with a visual media [e.g., video clip] on portable device 13 to realize the trick mode for the video playback on a first device (STB/TV). Spec. 3:19-22. The “focus” of Appellant’s claim 1 is to enable a user at portable device 13 to interact with video playback at first device (STB/TV) 12 to implement “trick playback functions,” via (1) transmission of “a first command to the first device to play back the video data corresponding to the image selected by the user” and (2) reception of “a second command . . . from said first device upon a change of the section of video data currently played back on the first device.” Spec. 15:21-16:9. Based on the claim language and the specification, we conclude that claim 1 is not directed to an abstract idea. Because Appellant’s claim 1 is directed to patent-eligible subject matter, we need not proceed to the second step of Alice. For these reasons, we do not sustain the Examiner’s § 101rejection of claims 1-6. § 103 Obviousness Rejection of Claims 1-4 In support of the obviousness rejection, the Examiner finds the combination of Hua and Gharaat teaches all limitations of Appellant’s claims 1-4. Final Act. 4-8. In particular, the Examiner finds Hua teaches Appeal 2020-006717 Application 15/704,050 12 Appellant’s claimed “portable device for controlling playback of video data on a first device external to said portable device” including the recited “browser module.” Id. at 5 (citing Hua ¶¶ 21, 23, 64, 68, Fig. 6). The Examiner then relies on Gharaat for teaching the missing feature, i.e., “a communication module coupled to the browser module and operative, in response to a selection of an image among the plurality of images by a user, to transmit a first command to the first device to play back the video data corresponding to the image selected by the user” in order to support the conclusion of obviousness. Id. at 6 (citing Gharaat ¶ 44). Appellant contends neither Hua nor Gharaat teaches or suggests the claimed “portable device for controlling playback of video data on a first device” and the user interactions between the claimed “portable device” and “first device.” Appeal Br. 9-11. For example, Appellant argues Hua only teaches presentation of video in different categories (e.g., news, sports, home videos, landscape, movies etc.) and different segments of shots, scenes, and chapters, via thumbnail. Id. at 10 (citing Hua ¶¶ 25-31). Appellant argues Hua “does not control the playback of video data on a first device remote from a portable device” and does not teach any user interaction between the claimed “portable device” and “first device,” including, for example: (1) “to transmit a first command to the first device to play back the video data corresponding to the image selected by the user” and (2) “in response to a second command received from said first device upon a change of the section of video data currently played back on the first device” as recited in claim 1. Id. Appellant also argues that Gharaat only “describes synchronization of media content over multiple devices” and “does not disclose or suggest ‘a Appeal 2020-006717 Application 15/704,050 13 second command received from said first device upon change of the section of video data currently played back on the first device’” as recited in claim 1. Id. (citing Gharaat ¶ 44). The Examiner does not sufficiently respond to Appellant’s arguments. For example, the Examiner acknowledges (1) Hua’s video presentation does not show “the image corresponding to the section of the video data currently played back by a first device external to said portable device” and (2) Hua does not teach the user interactions between the claimed “portable device” and “first device,” including, for example: (i) “to transmit a first command to the first device to play back the video data corresponding to the image selected by the user” and (ii) “in response to a second command received from said first device upon a change of the section of video data currently played back on the first device” as recited in claim 1. Ans. 13. The Examiner has now shifted his finding from Hua to Gharaat for teaching Appellant’s claimed “portable device for controlling playback of video data on a first device external to said portable device” and the recited user interactions between the claimed “portable device” and “first device.” Ans. 13-14 (citing Gharaat ¶¶ 41-44, 68). We do not agree with the Examiner. Obviousness is a question of law based on underlying factual findings, In re Baxter, 678 F.3d 1357, 1361 (Fed. Cir. 2012), including what a reference teaches, In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992), and the existence of a reason to combine references, In re Hyon, 679 F.3d 1363, 1365-66 (Fed. Cir. 2012). As correctly recognized by Appellant, Hua only teaches video presentations including a listing of video entries with thumbnails to represent the corresponding video. Hua’s Figure 1, depicting video Appeal 2020-006717 Application 15/704,050 14 presentations including a listing of video entries with thumbnails to represent the corresponding video, is reproduced below: Hua’s Figure 1 shows processing device 106 utilizing smart video presenter 110 to provide a visual display of multiple videos 104(1)-(v) on display screen 106. According to Hua, processing device 106 can be a desktop, laptop, mobile phone, PDA, TV-based device, or workstation. Hua ¶ 21. As a secondary reference, Gharaat does not cure the noted deficiencies of Hua to arrive at Appellant’s claimed subject matter. For example, Gharaat only teaches “a multifunction multimedia device” (e.g., digital video recorder, digital video player, digital picture frame, computer, mobile device) where multimedia content may be displayed to a user for user’s selection of scenes. Gharaat ¶¶ 2, 4, 68. Paragraph 44 of Gharaat, as relied upon by the Examiner, describes “playing of the media content may be synchronized over multiple devices based on the position in the playing Appeal 2020-006717 Application 15/704,050 15 of the media content.” Gharaat ¶ 44. For example, “[d]uring synchronized playing of the media content on multiple devices, a command to fast forward, rewind, pause, stop, seek, or play on one device may be performed on all synchronized devices.” Id. However, Gharaat does not allow one device to control another device, via user interactions between these devices in the manner recited in Appellant’s claim 1. Separately, we note the Examiner’s rationale to incorporate the teachings of Gharaat into Hua is insufficient to support the combination as required by KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); and In re Kahn, 441 F.3d 977, 988 (Fed Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). For example, the Examiner reasons “it would have been obvious . . . to combine Gharaat’s features with Hua’s invention . . . for enhancing user’s playback experience by allowing user to synchronously and remotely perform trick play of video content over multiple devices.” Final Act. 7. However, the Examiner’s stated reason to combine is circular and conclusory. See In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (noting that “‘conclusory statements’ alone are insufficient and, instead, the finding must be supported by a ‘reasoned explanation’”). Such a conclusory statement is insufficient to establish persuasively that a person of ordinarily skill in the art would have recognized some deficiency in Hua or had some other reason to look to Gharaat and combine their teachings with those of Hua. Moreover, it is not enough to say that there would have been a reason to combine two references because to do so would “have been obvious to one Appeal 2020-006717 Application 15/704,050 16 of ordinary skill.” See In re Naren Chaganti, 554 Fed. App. 917 (Fed. Cir. 2014). Such circular reasoning is not sufficient-more is needed to sustain an obviousness rejection. For these reasons, we do not sustain the Examiner’s obviousness rejection of base claim 1 and its dependent claims 2-4, which are not argued separately. For the same reasons, we also do not sustain the Examiner’s obviousness rejection of (1) claims 6 and 16 as obvious over the combined teachings of Hua, Gharaat, and Hamada; and (2) claims 7 and 17 as obvious over the combined teachings of Hua, Gharaat, and Badger. CONCLUSION On the record before us, we conclude Appellant has not demonstrated the Examiner erred in rejecting (1) claims 1-6 under the obviousness-type of double patenting rejection. However, we conclude Appellant has demonstrated the Examiner erred in rejecting (2) claims 1-6 as directed to patent-ineligible subject matter; (3) claims 1-4 as obvious over the combined teachings of Hua and Gharaat; (4) claim 5 as obvious over the combined teachings of Hua, Gharaat, and Hamada; and (5) claim 6 as obvious over the combined teachings of Hua, Gharaat, and Badger. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-6 Double Patenting Rejection 1-6 1-6 101 Eligibility 1-6 Appeal 2020-006717 Application 15/704,050 17 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4 103 Hua, Gharaat 1-4 5 103 Hua, Gharaat, Hamada 5 6 103 Hua, Gharaat, Badger 6 Overall Outcome 1-6 Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED