Ex Parte KITAZATO

Patent Trial and Appeal Board

Aug 6, 2018

14626216 (P.T.A.B. Aug. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/626,216 02/19/2015 Naohisa KITAZATO
22850 7590 08/08/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
448743US 9549
EXAMINER
MARANDI, JAMES R
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
08/08/2018 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):
OBLONPAT@OBLON.COM
tfarrell@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAOHISA KITAZATO
Appeal2018-000699
Application 14/626,216
Technology Center 2400
Before ROBERT E. NAPPI, ERIC S. FRAHM, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 2, 4--12, 14--18, 22, and 23, i.e., all pending claims. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellant identifies the real party in interest as Saturn Licensing LLC.
App. Br. 2.
Appeal2018-000699
Application 14/626,216
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns controlling
"operations for a predetermined application program in synchronization with
progress of a digital television broadcast show." Spec. ,r 1, Abstract. 2
Exemplary Claim
Independent claim 2 exemplifies the claims at issue and reads as
follows (with formatting added for clarity):
2. A reception apparatus, comprising:
circuitry configured to
receive a digital broadcast signal;
acquire, from the received digital broadcast signal,
control information associated with a particular
programming segment, the control information including
an application identifier, an action identifier, and a
destination identifier,
the application identifier identifying an
application,
the action identifier identifying an action
associated with the application, and
the destination identifier specifying whether
the action is to be processed by the reception
apparatus or an external device;
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed February 19, 2015; "Final Act." for the Final Office
Action, mailed November 4, 2016; "App. Br." for the Appeal Brief, filed
April 28, 2017; "Ans." for the Examiner's Answer, mailed August 30, 2017;
and "Reply Br." for the Reply Brief, filed October 30, 2017.
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Application 14/626,216
when the destination identifier specifies that the
action identified by the action identifier of the control
information is to be processed by the external device,
deliver the control information to the external device; and
when the destination identifier specifies that the
action identified by the action identifier of the control
information is to be processed by the reception apparatus,
perform an operation related to the application identified
by the application identifier in accordance with the
action.
App. Br. 15 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability, the Examiner relies on the following
prior art:
Fukuda et al. ("Fukuda") US 2004/0107449 Al June 3, 2004
Chiao US 2008/0284907 Al Nov. 20, 2008
Hendricks et al. ("Hendricks") US 2010/0180296 Al July 15, 2010
The Rejections on Appeal
Claims 2, 7, and 12 stand rejected on the ground of nonstatutory
double patenting as unpatentable over claims 1, 7, and 8 of U.S. Patent No.
8,966,564. Final Act. 3--4.
Claims 2, 4, 6-9, 11, 12, 14, 16, 18, 22, and 23 stand rejected under
35 U.S.C. § I02(b) as anticipated by Hendricks. Final Act. 5-10.
Claims 5, 10, and 15 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Hendricks and Fukuda. Final Act. 10-11.
Claim 17 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Hendricks and Chiao. Final Act. 11.
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Application 14/626,216
ANALYSIS
We have reviewed the rejections of claims 2, 4--12, 14--18, 22, and 23
in light of Appellant's arguments that the Examiner erred. Based on the
record before us and for the reasons explained below, we concur with
Appellant's contention that the Examiner erred in finding that the cited
portions of Hendricks disclose acquiring an "action identifier" and a
"destination identifier" from a broadcast signal and delivering the "action
identifier" and the "destination identifier" to an external device "when the
destination identifier specifies" that the action identifier's action occurs at
the external device as required by independent claims 2, 7, and 12.
The Double-Patenting Rejection of Claims 2, 7, and 12
Appellant does not contest the double-patenting rejection. App. Br. 7.
Because Appellant does not contest the double-patenting rejection, we
summarily sustain that rejection. See Hyatt v. Dudas, 551 F .3d 1307, 1314
(Fed. Cir. 2008) ( explaining that"[ w ]hen the appellant fails to contest a
ground of rejection to the Board, ... the Board may treat any argument with
respect to that ground of rejection as waived"); see also Manual of Patent
Examining Procedure (MPEP) § 1205.02 (9th ed. Rev. 08.2017 Jan. 2018)
("If a ground of rejection stated by the examiner is not addressed in the
appellant's brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner's answer.").
The§ 102(b) Rejection of Claims
2, 4, 6-9, 11, 12, 14, 16, 18, 22, and 23
Appellant argues that the Examiner erred in rejecting independent
claims 2, 7, and 12 because Hendricks "fails to describe" acquiring an
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Appeal2018-000699
Application 14/626,216
"action identifier" and a "destination identifier" from a broadcast signal and
delivering the "action identifier" and the "destination identifier" to an
external device "when the destination identifier specifies" that the action
identifier's action occurs at the external device as required by the claims.
See App. Br. 10-11; Reply Br. 3--4. In particular, Appellant contends that
the Examiner maps "the interactive virtual object trigger action (56) in
Hendricks ... to both the recited 'action identifier' and 'destination
identifier."' Reply Br. 3; see Ans. 17-19. Further, Appellant asserts that in
Hendricks: (1) "the reception device (30) may take an action defined in the
interactive virtual object trigger action (56)"; and (2) "the reception device
(30) may provide the virtual object control commands (153) or the virtual
object software applet (152) to the external device" based on the trigger
action. App. Br. 10-11. Appellant also asserts that Hendricks fails to
disclose "providing the interactive virtual object trigger action (56) to the
external device." Reply Br. 4 ( emphasis omitted).
The Examiner finds that virtual object trigger action 56 in Hendricks
satisfies the requirements for the "action identifier" and the "destination
identifier" in claims 2, 7, and 12. See Ans. 17-19. The Examiner reasons
that virtual object trigger action 56 "trigger[ s] the virtual object control
command 153 and applet 152 to be sent to the external device" and,
therefore, "the control information, pertaining to the external device, is
delivered to the external device as claimed." Id. at 20-21 ( emphasis
omitted).
Based on the record before us, however, we agree with Appellant that
the Examiner has not adequately explained how the cited portions of
Hendricks disclose acquiring an "action identifier" and a "destination
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Application 14/626,216
identifier" from a broadcast signal and delivering the "action identifier" and
the "destination identifier" to an external device "when the destination
identifier specifies" that the action identifier's action occurs at the external
device. In Hendricks, interactive object processor 770 receives virtual
object trigger action 56, and interactive object processor 770 determines
whether virtual object trigger action 56 requires action by an external device.
Hendricks ,r,r 255-256, 258, Fig. 6. If so, interactive object processor 770
sends control commands 153 to the external device for processing and may
send software applet 152 to the external device. Id. ,r,r 256, 258. But
Hendricks does not indicate that interactive object processor 770 sends
virtual object trigger action 56 to the external device. See id. ,r,r 255-256,
258, Fig. 6. As Appellant notes, "Hendricks as best understood only
corresponds to delivering substitution or derivation of the acquired"
identifiers, i.e., the "action identifier" and the "destination identifier." Reply
Br. 4.
Because the Examiner has not adequately explained how Hendricks
discloses delivering the acquired "action identifier" and the acquired
"destination identifier" to the external device, we do not sustain the § 102(b)
rejection of claims 2, 7, and 12.
Claims 4, 6, and 18 depend from claim 2; claims 8, 9, 11, and 22
depend from claim 7; and claims 14, 16, and 23 depend from claim 12. For
the reasons discussed regarding the independent claims, we do not sustain
the § 102(b) rejection of these dependent claims.
The§ 103 (a) Rejections of Claims 5, 10, 15, and 17
Claims 5 and 1 7 depend from claim 2; claim 10 depends from
claim 7; and claim 15 depends from claim 12. On this record, the Examiner
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Application 14/626,216
has not shown how the additionally cited secondary references-Fukuda and
Chiao------overcome the deficiency in Hendricks discussed above for claims 2,
7, and 12. Hence, we do not sustain the§ 103(a) rejections of claims 5, 10,
15, and 17.
DECISION
We affirm the rejection of claims 2, 7, and 12 on the ground of
nonstatutory double patenting.
We reverse the rejection of claims 2, 4, 6-9, 11, 12, 14, 16, 18, 22,
and 23 under 35 U.S.C. § 102(b).
We reverse the rejections of claims 5, 10, 15, and 17 under 35 U.S.C.
§ 103(a).
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). See
37 C.F.R. § 41.50(±).
AFFIRMED-IN-PART
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