Vaysman, Arthur et al.

Patent Trials and Appeals Board

Jul 6, 2020

13098663 - (D) (P.T.A.B. Jul. 6, 2020)

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.
13/098,663 05/02/2011 Arthur Vaysman SHM-FSP1098US 9244
3624 7590 07/06/2020
VOLPE AND KOENIG, P.C.
30 SOUTH 17TH STREET, 18TH FLOOR
PHILADELPHIA, PA 19103
EXAMINER
LANGHNOJA, KUNAL N
ART UNIT PAPER NUMBER
2423
NOTIFICATION DATE DELIVERY MODE
07/06/2020 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):
eoffice@volpe-koenig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ARTHUR VAYSMAN and EDUARD ZASLAVSKY
___________

Appeal 2019-004570
Application 13/098,663
Technology Center 2400
_________________

Before JASON V. MORGAN, IRVIN E. BRANCH, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 75–78.2 We have jurisdiction under
35 U.S.C. § 6(b). Oral arguments were heard on June 18, 2020. A transcript
of that hearing is being prepared and will be added to the record in due time.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Showfer
Media, LLC. Appeal Br. 3.
2 Claims 1–74 are cancelled. Appeal Br. 21.
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CLAIMED SUBJECT MATTER
Invention
Appellant’s invention “relates to a multiple display device control
system and a method of controlling display of electronic program guide
(EPG) application data on multiple display devices.’” Appeal Br. 3.3
Illustrative Claim
Claims 75 and 78 are independent claims. Claim 75 is illustrative and
is reproduced below with disputed limitations italicized:
75. A multiple display device control system
comprising:
a client device comprising:
a plurality of receivers configured to receive a
plurality of video content streams, each video content
stream comprising video content to be displayed;
a first video and data output interface port
configured to provide, for display on a first display
device, one of (i) the video content of the plurality of
video content streams and (ii) electronic program guide
(EPG) application data comprising a plurality of
selectable elements each associated with the video
content of one of the plurality of video content streams;
a second video and data output interface port
configured to provide, for display on a second display
device remote from the first display device, the other of
the video content and the EPG application data for

3 We refer to: (1) the originally filed Specification filed May 2, 2011
(“Spec.”); (2) the Final Office Action mailed August 13, 2018 (“Final
Act.”); (3) the Appeal Brief filed February 7, 2019 (“Appeal Br.”); (4) the
Examiner’s Answer mailed March 15, 2019 (“Ans.”); and (5) the Reply
Brief filed May 15, 2019 (“Reply Br.”).
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simultaneous display with the one of the video content
and the EPG application data on the first display device;
a remote control receiver device configured to
receive a plurality of user input selections; and
a processor in communication with the plurality of
receivers and the remote control receiver device; and
a remote control device, in communication with the
remote control receiver device of the client device, comprising
a first user input selector provided on the remote control device
and a second user input selector provided on the remote control
device separate from the first user input selector, wherein
configured to receive a first user input selection of the plurality
of user input selections, provided via the first user input
selector, changes a focus to one of the first display device and a
second user input selection of the plurality of user input
selections, provided via the second user input selector, changes
the focus to the second display device,
wherein the change in focus, responsive to the first user
input selection, enables selection of one of the plurality of
selectable elements displayed on the first display device and
disables selection of one of the plurality of selectable elements
displayed on the second display device and the change in focus,
responsive to the second user input selection, enables selection
of one of the plurality of selectable elements displayed on the
second display device and disables selection of one of the
plurality of selectable elements displayed on the first display
device, and
selection of the one of the plurality of selectable elements
displayed on one of the first display device and the second
display device causes the video content associated with the one
selectable element to be displayed on the other of the first
display device and the second display device by tuning one of
the receivers for the video content associated with the one
selectable element.
Appeal Br. 21–22 (Claims Appendix).
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REJECTION
The Examiner rejects claims 75–78 under pre-AIA 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
Final Act. 4–6.
OPINION
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
The Examiner rejects claim 75 under 35 U.S.C. § 112, first paragraph.
The Examiner finds lack of support in the Specification for the limitation:
a remote control device, in communication with the remote
control receiver device of the client device, comprising a first
user input selector provided on the remote control device and a
second user input selector provided on the remote control device
separate from the first user input selector, wherein configured to
receive a first user input selection of the plurality of user input
selections, provided via the first user input selector, changes a
focus to one of the first display device and a second user input
selection of the plurality of user input selections, provided via
the second user input selector, changes the focus to the second
display device,
as recited in claim 75. The Examiner finds “Figures 134 and 136 describe
distinct embodiments and fail to show similar selectable elements
(DISPLAY 1 and DISPLAY 2) on the remote control.” Final Act. 3. The
Examiner notes that Figure 149 shows a remote control for multi-display
applications but finds “[t]here is nothing in the specification that suggests
that the multi-screen applications in FIGS. 134 and 136 including remote
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control 8 and the remote control device 8 for multi-display applications
shown in FIG. 149 can or should be combined.” Ans. 4.
Appellant relies on Figures 134–137, 149, 150 and paragraphs 118
and 342 to support the limitation at issue. Appeal Br. 10. Appellant argues
that “the specification does suggest that FIGS. 134 and 136 should be
combined with FIG. 149 . . . because the same reference numeral ‘8’ is used
to identify the same feature (i.e., the remote control device) in FIGS. 134,
136 and 149.” Id. at 15.
We determine whether an applicant has satisfied the written
description requirement by determining whether the patent specification
describes the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d
1115, 1122 (Fed. Cir. 2008). We agree with Appellant that the disclosure in
the originally filed application would have been sufficient to show one of
ordinary skill had possession of the claimed multi-display control capability.
As Appellant notes (Appeal Br. 17), “drawings alone may be sufficient to
provide the ‘written description of the invention’ required by § 112, first
paragraph.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1564, (Fed. Cir.
1991) (emphasis omitted). Figures 134–137 illustrate remote control 8
controlling a multi-display device comprised of a first display device and a
second display device. Spec. ¶¶ 227–230. Although the remote control of
Figures 134–137 does not illustrate multi-display control capability, this
functionality is illustrated by remote control 8 of Figure 149. We agree with
Appellant that “because the same reference numeral ‘8’ is used to identify”
both the remote control in Figures 134–137 and in Figure 149, that a person
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of ordinary skill in the art would have understood the originally filed
application to disclose a remote control controlling a first and second display
as set forth in claim 75. Appeal Br. 15–16.
As set forth above, claim 75 recites wherein receiving “a first user
input selection . . . via the first user input selector, changes a focus to one of
the first display device and a second user input selection of the plurality of
user input selections, provided via the second user input selector, changes
the focus to the second display device.” Appellant relies on Figures 134–
137, 149, 150 and paragraphs 118 and 342 to support this limitation. Appeal
Br. 10.
The Examiner finds the “specification and figures fail to provide
support for” change in focus, as recited in claim 75, because “Para. 0127
describes that ‘focus’ relates to highlighted or otherwise emphasized screen
element. However, [the] claimed ‘focus’ suggests [the] screen itself and not
highlighted or otherwise emphasized screen element.” Final Act. 3; Ans. 5
(emphasis omitted).
Appellant argues “in the [Specification] a particular display has
‘focus’ because it can receive an input from the user. Likewise, the
highlighted screen element, like the cursor position, also has focus because it
indicates where the input is received.” Appeal Br. 19.
We agree with Appellant that the disclosure in the originally filed
application would have been sufficient such that “a person of ordinary skill
the art would understand that ‘the focus indicates the component of the
graphical user interface which is selected to receive input.’” Id. at 18.
Appellant adds, “the person skilled in the art would understand that within a
graphical user interface (i.e. the Windows Operating) system, a particular
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window can have focus and so can individual components within the
window. Id.
Moreover, we note that Appellant’s originally filed Specification
discloses that “FIG. 149 shows remote control that allows subscribers to
change focus from one display to another for multi-display applications.”
Spec. ¶¶ 342, 118 (emphasis added); see Reply Br. 3 (citing Spec. ¶¶ 118,
342). Accordingly, we determine there is sufficient support in the
Specification for a first and second user input selection changing a focus to
one of the first and second display device, as recited in claim 75.
Claim 75 further recites “wherein the change in focus, responsive to
the first user input selection, enables selection of one of the plurality of
selectable elements displayed on the first display device and disables
selection of one of the plurality of selectable elements displayed on the
second display device” and “the change in focus, responsive to the second
user input selection, enables selection of one of the plurality of selectable
elements displayed on the second display device and disables selection of
one of the plurality of selectable elements displayed on the first display
device,” Appellant relies on Figures 134–137, 150 and paragraph 342 to
support this limitation. Appeal Br. 10.
The Examiner finds the Specification fails to support “disables
selection of one of the plurality of selectable elements displayed on the
second display device” and “disables selection of one of the plurality of
selectable elements displayed on the first display device,” as recited in claim
75. Final Act. 3–4; Ans. 5. The Examiner does not provide a rationale for
the rejection other than stating “the examiner fails to find the term
‘disable(s)’ anywhere in the originally filed specification.” Ans. 5.
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Appellant argues that:
a person skilled in the art would understand from the
specification that the change in focus from one display to another
display enables a user to navigate the EPG data on the newly
focused display device (e.g., Primary Display in FIG. 134 or
Secondary Display in FIG. 136 and select one of the EPG
elements (e.g., highlighted Mosaic element 8 in FIG. 134 or
highlighted Title bar 13 in FIG. 136) of the EPG data on the
newly focused display device and that the selection of EPG
elements displayed on the other display device is disabled
because the user is not able to navigate [to] the EPG data on the
newly focused display device.
Reply Br. 4–5.
We agree with Appellant. Figure 134 of the Specification is
reproduced below.

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Figure 134 shows remote control 8 controlling separate screens
including a primary display and a secondary display. The primary display of
Figure 134 allows selection of a mosaic element such as element 8, which
results in playing of a video stream linked to mosaic element 8 on Secondary
Screen. Figure 135 of the Specification (not depicted above) illustrates
remote control 8 toggling screens such that the mosaic elements are
displayed on the secondary display and the linked video stream is played on
the primary display. Appellant argues, and we agree, that by disclosing
switching screens so that only the video stream 12 is displayed on the
secondary screen and not the mosaic elements 10, 11 (Figure 134), the
Specification supports disabling the selection of one of the plurality of
selectable elements on the second (i.e., secondary) display device, as
claimed. Appellant argues, and we agree, that by disclosing switching of
screens so that only the video stream 12 is displayed on the primary screen
and not the mosaic elements 10, 11 (Figure 135), the Specification supports
disabling the selection of one of the plurality of selectable elements on the
first (i.e., primary) display device, as claimed. In addition, as Appellant
notes, the Specification describes that Electronic Program Guide
applications “can be created ‘on devices with more than one tuner that can
simultaneously display video and applications graphics of that application on
more than one display, for example allowing subscribers to view and
navigate DMXEPG on one display, which can be a touch screen display, and
view selected show on another display.’” Appeal Br. 8 (citing Spec. ¶ 31).
Accordingly, we determine there is sufficient support in the Specification for
disabling selection of one of the plurality of selectable elements on the first
or second display device, as recited in claim 75.
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In view of our discussion above, we do not sustain the 35 U.S.C.
§ 112, first paragraph rejection of independent claim 75. Independent claim
78 includes similar limitations and so we do not sustain that rejection. We
also do not sustain the rejection of claims 76 and 77, which depend from
independent claim 75.
CONCLUSION
We reverse the Examiner’s decision to reject claims 75–78 under 35
U.S.C. § 112, first paragraph.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
75–78 112, first
paragraph
Written Description 75–78

REVERSED