Ex Parte 6393158 et al

Patent Trial and Appeal BoardNov 15, 2012

90011365 (P.T.A.B. Nov. 15, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 90/011,365 12/03/2010 6393158 167162800400 6950 58417 7590 11/16/2012 HEINZ GRETHER PC G2 Technology Law P.O. Box 202858 AUSTIN, TX 78720 EXAMINER DESAI, RACHNA SINGH ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 11/16/2012 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 MONKEYmedia, Inc. ____________________ Appeal 2012-010447 Reexamination Control 90/011,365 Patent 6,393,158 B1 Technology Center 3900 ____________________ Before HOWARD B. BLANKENSHIP, MICHAEL R. ZECHER, and JENNIFER S. BISK, Administrative Patent Judges. BISK, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Patent Owner, MONKEYmedia, Inc., appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 1-9, 11-17, 22-28, 32-35, 38-41, 45, 48, and 49 of U.S. Patent 6,393,158 B1 (the “’158 patent”). App. Br. 3; Ans. 3-4. Claims 10, 18-21, and 29-31 have been canceled. App. Br. 3. Claims 36, 37, 42-44, 46, and 47 have been found patentable. App. Br. 4. The reexamination proceeding arose from a request for ex parte Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 2 reexamination of the ’158 patent filed on December 3, 2010. We have jurisdiction under 35 U.S.C. §§ 6(b), 134, and 306. We AFFIRM. The Rejections 1. Claims 35 and 48 stand rejected under 35 U.S.C. § 112, ¶ 1 as failing to comply with the written description requirement. Ans. 4-6. 2. Claims 15, 16, and 23 stand rejected under 35 U.S.C. § 102(b) as anticipated by Lavallee (US 5,737,552; Apr. 7, 1998). Ans. 6-12. 3. Claims 1-9, 11-14, 17, 22, 24-28, 32-35, 38-40, 48, and 49 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lavallee and Davenport (US 5,101,364; Mar. 31, 1992). Ans. 12-45. 4. Claims 7-9, 41, 45, and 48 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lavallee and Roach (US 5,692,212; Nov. 25, 1997). Ans. 45-54. The Invention The ’158 patent relates to storing and playing media content in a manner such that a user can interactively choose to expand or contract the material viewed. See ’158 patent, col. 1, ll. 5-8; col. 7, ll. 15-19. The invention is described as allowing flexibility to the user in traversing the provided content—topics can be expanded upon user request. Id. at ll. 42-43. One embodiment describes playing content where each of the continuous play media segments has a first terminus (beginning of the segment), a second terminus (end of the segment), a temporal flow from beginning to end, and at least one segment is associated with links to other App Reex U.S. segm begin meth segm on to play expa can b ll. 16 skipp comp eal 2012-0 amination Patent 6,3 ents. Id. a ning at th od determ ent—if so the “cont ed without Figure 3 Figure 3 nding a se e played i -21. 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The Expert Declarations Patent Owner provides five declarations supporting its position: (1) Professor Glorianna Davenport (“Davenport”); (2) Dr. Michael Mills (“Mills”); (3) Dr. Gareth Loy (“Loy”); (4) Professor Rachel Strickland (“Strickland”); and (5) Eric Justin Gould Bear (“Bear”)1 (collectively, “Declarants”). We find some of the Declarants’ statements entitled to little, if any, weight. For example, Bear is a named inventor of the ’158 patent and is 1 When citing to Bear, we are referring to the Declaration of Eric Justin Gould Bear filed under 37 C.F.R. § 1.132 dated August 15, 2011. Eric Justin Gould Bear also filed a Declaration under 37 C.F.R. § 1.131, which is not relevant to this decision. Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 6 President and CEO of MONKEYmedia, Inc., the assignee of the ’158 patent. Rachel Strickland is also a named inventor of the ’158 patent. As such, these two declarations are entitled to little weight compared to the language of the patent itself. See Bell & Howell Document Management v. Altek Sys., 132 F.3d 701, 706 (Fed. Cir. 1997) (“The testimony of an inventor and his attorney concerning claim construction is thus entitled to little or no consideration. The testimony of an inventor is often a self-serving, after-the- fact attempt to state what should have been part of his or her patent application….”); Roton Barrier, Inc. v. Stanley Works, 79 F.3d 1112, 1126 (Fed. Cir. 1996) (“We have previously stated than an inventor’s after-the- fact testimony is of little weight compared to the clear import of the patent disclosure itself.”). The testimony by Davenport (named inventor of one of the references cited by the Examiner in this case) consists, in significant part, of conclusions based on Davenport’s review of a “prototype” created by ’158 patent inventors Bear and Strickland in 1996. Davenport Decl. ¶¶ 1, 12-14; see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (“The litigation- induced pronouncements of [the named inventor of prior art reference], coming nearly at the end of the term of his patent, have no effect on what the words of that document in fact do convey and have conveyed during its term to the public.”). There is no evidence that the “prototype” reviewed by Davenport actually embodies any of the claims of the ’158 patent. Such testimony is entitled to little, if any, weight. Moreover, all of Declarants’ testimony appears to be litigation-driven. The testimony frequently is directed to the general ideas allegedly Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 7 encompassed by the ’158 patent and several related patents referred to collectively by Declarants as “the Seamless Expansion patents.” See, e.g., Loy ¶ 1; Mills ¶ 1; Davenport ¶ 1; Strickland ¶ 1. Often it is unclear, what, if any, language of the claims of the ’158 patent is relevant to such testimony. ANALYSIS The Written Description Rejection The Examiner rejects claims 35 and 48 under 35 U.S.C. § 112, ¶ 1, as failing to comply with the written description requirement. Ans. 4-6. The Examiner finds that the two claims, each of which were added during the reexamination proceeding, “contain[] subject matter that was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.” Ans. 4. Specifically, the Examiner finds that the Specification does not support claim 35’s limitation “calculating the first terminus of the expansion segment by reference to the second terminus of the at least one segment” or claim 48’s similar limitation “the first terminus of another of said segments is dynamically determined in response to said user interaction.” Ans. 5-6. The Patent Owner asserts that a person of ordinary skill in the art would recognize that, at the time of filing, the inventor possessed the entire subject matter claimed by both claims 35 and 48. App. Br. 12-14. The Patent Owner explains that the ’158 patent generally teaches that the links from one segment to another are determined dynamically after the user chooses to play an expansion segment—as are the termini of the segments. App. Br. 12 Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 8 (citing Loy ¶¶ 33-34, 40-41; Mills ¶ 21-22; Bear ¶¶ 26-27, 50; Strickland ¶ 18; ’158 patent col. 16, ll. 33-40). According to Patent Owner and Declarants, a person of ordinary skill in the art would understand that this disclosure of “flexible, dynamically-defined segments” (App. Br. 12), along with Figure 7A, reasonably supports the limitations at issue (App. Br. 13 (citing Loy ¶ 39-41; Mills ¶ 21; Bear ¶¶26-27; Strickland ¶ 18; Davenport ¶ 13)). To meet the adequate written description requirement, “the applicant must . . . convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Vas- Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Declarants describe “the claimed invention” using generalities, testifying about what a person of ordinary skill in the art would understand after reading the specification, without reference to actual claim language. See e.g., Loy ¶ 33 (“[A] person of ordinary skill in the art would understand that the claimed invention teaches that the beginning and end of a segment can be dynamically defined based on, among other things, the decision point or interruption point where the expiation to optional content occurs. . .”) (citing ’158 patent 7:15-19, 16:33-40); Loy ¶ 34 (describing that “the claimed invention teaches flexible, dynamically defined ‘segments’”) (citing ’158 patent 10:50-55); Mills ¶ 22 (“Seamless Expansion teaches a model for computationally dealing with time in relation to user input. . . .”); Bear ¶ 50 (“Claim 35 is a new dependent claim that limits the method to a particular type of dynamic linking between the first segment of main content and an expansion segment is supported by the ’158 specification (Figure 7A, for App Reex U.S. exam Spec both gene testim findi first of th repro focu ll. 61 238, discl (the 3-10 254, eal 2012-0 amination Patent 6,3 ple).”). N ification f the briefs rally witho ony poin ng—that t terminus o e at least o For exam duced bel Figure 7 sing on “se -67. 216, and 242 a oses that d end of seg . The first 256, and 2 10447 Control 9 93,158 B1 either the or the actu and the te ut any ref ted to by P he specific f the expa ne segmen ple, to su ow: A depicts amless ex 218, 220, re expansi ecision po ment 214) and secon 46) “may 0/011,365 briefs nor al claim la stimony de erence to w atent Own ation does nsion segm t.” pport their a continuo pansion w and 222 ar on links. I ints can b of the seg d terminus vary linea 9 the cited te nguage of scribe the hat is act er directly not suppo ent by re position, us play m ithin segm e expansio d. at col. 1 e located b ment they of the exp rly with th stimony p claims 35 Specifica ually claim addresse rt the clai ference to Declarants edia segme ent 214.” n decision 6, ll. 2-14 efore or a are in (seg ansion se e frame an oint to sup and 48. In tion’s conc ed. And n s the Exam med “calc the second point to F nt expans ’158 paten points an . The Spec t the secon ment 214 gments (22 d/or temp port in th stead, epts one of the iner’s ulating the terminus igure 7A, ion t, col. 15, d 228, 236 ification d terminu ). Id. at ll. 6, 252, oral e , s App Reex U.S. dista than dyna 35 an corre “calc seco a cal For e deter temp langu Own logic eal 2012-0 amination Patent 6,3 nce from t pointing t mic a pers d 48 disc sponding ulating th nd terminu culation is xample, th mined sta oral distan age does er nor Dec al gap. The sam 10447 Control 9 93,158 B1 he starting o vague te on of ordi losed, Pate descriptio e first term s of the at not made e only tex tes that the ce from th not clearly larants ex e is true fo 0/011,365 expansion stimony co nary skill w nt Owner n in the Sp inus of th least one self-evide t even arg y “may va e starting support th plain how r Figure 7 10 decision ncluding ould find does not e ecification e expansio segment.” nt by Figu uably add ry linearly expansion e limitatio a person o B, reprodu point.” Id that becau the subje xplain how specifica n segment See App. re 7A or it ressing ho with the decision p n at issue f ordinary ced below . at ll. 34-4 se segmen ct matter o this Figu lly disclos by referen Br. 12-14. s correspo w the term frame and/ oint,” but . And neit skill wou : 0. Other ts can be f claims re or the es ce to the And such nding text ini are or this her Patent ld close th . e Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 11 Figure 7B schematically depicts an alternative continuous play media expansion. ’158 patent, col. 16, ll. 41-43. Neither Figures 7A and 7B, nor any of the language cited to in the ’158 patent, even mentions a calculation. See App. Br. 12-14. And it is not clear from the Declarants’ testimony how a person of skill in the art would understand such a calculation is disclosed. See Loy ¶¶ 33-34, 39-41; Mills ¶¶ 21-22; Bear ¶¶ 26-27, 50; Strickland ¶ 18; Davenport ¶ 13. Further, Declarants’ testimony does not reveal any factual corroboration to support their conclusions. See In re American Academy of Science Tech Center, 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”) (internal citations omitted). We do not find Patent Owner’s argument or the testimony relied upon persuasive. The Examiner explains that while Figures 7A and 7B and the corresponding disclosure of the ’158 patent discuss multiple expansion links of segment 214 (the at least one segment) “there is no mention or support for the calculation of the first terminus of the expansion link by referring to the second terminus of the at least one segment.” Ans. 5 (emphasis in original). Further, the Examiner states that while the Specification supports a premature contraction point, it does not teach “dynamically determining the first terminus of another of said segments because the first terminus of another of said segments because the first terminus of other segments is already determined based on the link.” Ans. 5-6, 56-57. Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 12 Patent Owner has not persuasively addressed these findings and therefore has not persuaded us that the written description rejection should be reversed. We thus affirm the Examiner’s rejection of claims 35 and 48 under 35 U.S.C. § 112, ¶ 1, as failing to comply with the written description requirement. The Anticipation Rejection The Examiner rejects claims 15, 16, and 23 as anticipated by Lavallee. Ans. 6-12, 57-70. Patent Owner asserts, based on Declarants’ testimony, that Lavallee does not disclose at least the claimed “continuing segment,” “link stack,” and “non-segment indicator” and therefore does not anticipate the claims. App. Br. 14. Claim 15, representative of the claims at issue, is reproduced below with emphasis added: A method for playing a stored content comprising: providing a plurality of segments which collectively comprise said stored content, wherein each of said segments has a first terminus and a second terminus and a continuity link associated with a member of the collection of a segment indicator and a non-segment indicator; wherein content in each of said segments has a temporal flow from said first terminus to said second terminus; and wherein at least one segment is associated with a plurality of expansion links to a corresponding plurality of other of said segment; playing said at least one segment with said temporal flow; determining prior to reaching said second terminus whether a content expansion is desired; linking to an expansion segment, pushing said continuity link onto a link stack and playing said expansion segment if said content expansion is desired; Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 13 linking to a continuing segment and playing said continuing segment if said content expansion is not desired and if said continuity link indicates said continuing segment; and determining if said link stack is empty, popping said link stack, playing said segment indicated by popped said link stack if said content expansion is not desired, and if determining said link stack is not empty and if said continuity link indicates a non-segment and if said popped link stack indicated a segment. “continuing segment” Patent Owner asserts that Lavallee does not teach a “continuing segment” as claimed. App. Br. 16-20. According to Declarants, a person of ordinary skill would understand that the ’158 patent’s “continuing segment” requires temporal continuity—temporal flow within and between each of the claimed segments with little or no delay—and this concept is not disclosed in Lavallee because of its reliance on SMPTE time codes2 binding segments and their links to single frames that cannot be changed dynamically. App. Br. 17 (citing Loy ¶¶ 36, 43-48; Mills ¶¶ 15-17; Bear ¶¶ 26-27, 30). In other words, according to the Patent Owner, the interpretation of the term “continuing segment,” must include the notion that if interrupted by an 2 An SMPTE time code is a form of media metadata defined by the Society of Motion Picture and Television Engineers as a standard label for an individual frame of video or film that provides a reference for editing, synchronization, and identification. See Lavallee, col. 5, l. 64—col. 6, l. 7. Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 14 expansion segment, the “continuing segment” starts just after the original segment was interrupted with no interruption in flow and no repeated or skipped content. In supporting the proposed claim construction, Patent Owner cites to testimony by Declarants that a person of ordinary skill in the art would have understood the segments discussed in the ’158 patent to be dynamic and based on the choices of the user made while interacting with the content. App. Br. 17-18 (citing Loy ¶¶ 26-51; Mills ¶¶ 15, 16, 21; Strickland ¶¶ 13- 16, 18; Bear ¶¶ 25-28). In particular, Declarant states that “a person of ordinary skill in the art would understand that the claimed invention teaches that the beginning and end of a segment can be dynamically defined based on, among other things, the decision point or interruption point where the expansion to optional content occurs.” Loy ¶ 33 (citing ’158 patent, col. 16, ll. 33-40). According to the Patent Owner, Lavallee does not disclose such a “continuing segment” because Lavallee requires that after an expansion segment is played, either the beginning of the original segment is played, thus repeating some content, or the next scene after the original segment is played, thus potentially skipping some content. Lavallee, col. 5, ll. 7-13 (“[W]hen the end of Scene 2.n [the expansion segment] is reached, embodiments of the present invention contemplate that the program will be the original requesting scene (i.e., Scene 2) or . . . it might be the scene after the requesting scene (i.e., Scene 3)”). And Patent Owner asserts that a person of ordinary skill at the time of the invention would not interpret “the point where the user originally requested additional program information” Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 15 (App. Br. 42) as referring to a point within the original segment because Lavallee discloses using fixed “SMPTE” time codes for linking to various segments and every other reference in Lavallee to the issue discusses the next segment played (see Lavallee, col. 5, ll. 7-13, Figure 4, 418). Instead, according to Patent Owner, a person of ordinary skill in the art would have understood that language in Lavallee to refer to an entire segment, which can only start playing at the beginning of a scene. App. Br. 20 (citing Loy ¶42 (“A person of ordinary skill in the art who had only read Lavallee and not Gould would therefore reasonably interpret Lavallee’s ‘point’ to mean the frame at which an additional or alternate scene would begin. . . .”); Mills ¶ 22 (“[the quoted language] would be understood by a person of ordinary skill in the art that this isolated reference to ‘point’ is not teaching dynamic linking but is still referring to Lavallee’s schema of fixed scene termini and pre-encoded SMPTE [Edit Decision Lists] that is being described.”)). The Examiner disputes Patent Owner’s proposed construction of the term “continuing segment,” asserting that Patent Owner is improperly importing limitations from the specification that are not required by the claim language. Ans. 66. The Examiner asserts that nothing in the claim requires a “continuing segment” to continue from a point of interrupt as opposed to starting at the beginning of a fixed segment. Id. In addition, the Examiner finds that Lavallee’s selection of expansion links is not static because the links “require a user to select the link during programming.” Ans. 59. Thus, the Examiner concludes that the “next” pre-determined scene Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 16 in Lavallee after the “requesting scene” is a “continuing segment” as claimed. Ans. 58. The Examiner also points to language in Lavallee that discloses a “continuing segment” even under Patent Owner’s proposed construction: “once there are no more scenes at the same level, the requesting scene (i.e. the scene from which additional program information was requested) will be conveyed back to the user (at, for example, the point where the user originally requested additional program information).” Ans. 60 (quoting Lavallee, col. 9, ll. 40-45) (emphasis added by Examiner). We are not persuaded that the claimed “continuing segment” is as narrow as proposed by Patent Owner. The testimony pointed to by Patent Owner is directed to an understanding of “continuing segment” based on where that segment begins playing after being interrupted by an expansion segment. However, none of the claims at issue even address what happens after an expansion segment is played. In fact, Claims 15, 16, and 23 only refer to the playing of a “continuing segment” in the context of when an expansion segment is not played. All three claims at issue recite playing a “continuing segment” only if “said content expansion is not desired.” Thus, the testimony pointed to by Patent Owner regarding the interpretation of a “continuing segment” relies on features not recited by the claim and therefore is not commensurate with the scope of the claims. App. Br. 16-20. Moreover, neither the briefs nor the testimony point to language in the Specification that clearly defines a “continuing segment” to be so limited. See generally App. Br. 16-20. Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 17 Using a broader construction of “continuing segment”—a segment that comes after the claimed “at least one segment”—we agree with the Examiner that Lavallee’s disclosure that the main video proceeds linearly to a next segment when no action is taken by the user. Lavallee Fig. 4, 9:18-67 (“Once the program information is conveyed to the user, the current scene will continue to be shown until some event has occurred . . . where no event occurs, the current scene will continue to be conveyed to the user. . . . Thus, continuous, linear program information is conveyed to the user when the user does nothing.”). Further, we agree with the Examiner that Lavallee anticipates the claimed “continuing segment” even under a narrower interpretation of the term. The claims do not clearly set forth what occurs when an expansion segment is played, and Lavallee discloses that the viewer may be returned to the point at which the initial segment was interrupted. Lavallee 9:40-47 (“[T]he requesting scene . . . will be conveyed back to the user (at, for example, the point where the user originally requested additional program information.”). Declarants’ testimony to the contrary does not reveal the factual bases on which they rely and is thus not persuasive. See Loy ¶¶ 25, 40, 42; Mills ¶ 22. To the extent that Patent Owner argues that the proffered testimony is evidence of “unexpected results,” we find the evidence is not commensurate in scope with the claims and therefore not persuasive. App. Br. 17 n. 3 (citing to cases dealing with secondary considerations of non-obviousness). For example, as support for the patentability of these claims, Patent Owner points to a statement by Davenport referring to the “prototype” that, as Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 18 discussed above, is not linked in any way to the claims at issue. App. Br. 17 (quoting Davenport Decl. ¶ 13). The testimony does not reveal what features and elements were included in the prototype. See Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) (“The objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.”). We are therefore not persuaded that the Examiner erred in determining that Lavallee discloses the claimed “continuing segment.” “link stack” The Patent Owner also argues that Lavallee does not disclose a “link stack” as claimed because the “stack” described by Lavallee does not hold the same type of data as the claimed “link stack.” App. Br. 20-21. Patent Owner argues that the claimed link stack holds the “remembered state” of the interruption point while Lavallee’s link stack holds only the fixed frame number corresponding to a predetermined segment—either the beginning of the interrupted segment or the beginning of the next segment. App. Br. 21 (citing Loy ¶ 41). The Examiner finds that Lavallee discloses this limitation because “the location or time of requesting scene is stored to provide a link stack.” Ans. 8 (citing Lavallee, col. 4, ll. 51-65, col. 5, ll. 49-52, col. 7, ll. 24-31). However, neither the briefing nor the Loy declaration relied upon, directly addresses the language in the text relied upon by the Examiner. The Examiner further explains in his response to Patent Owner’s argument that Lavallee’s disclosure of storing the time of the requesting scene on the stack Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 19 is the same as the claimed language of “linking to an expansion segment, pushing said continuity link onto a link stack.” Ans. 69 (citing Lavallee, col. 7, ll. 24-31). Appellant does not respond to this additional finding. See Reply Br. 6-11. We are therefore not persuaded of error in the Examiner’s findings. “non-segment indicator” Patent Owner asserts that Lavallee does not disclose a “non-segment indicator” as claimed because such indicator cannot, as indicated by the Examiner, point to the end of the program. App. Br. 21. As support for this interpretation, Patent Owner points to language in the Specification stating that “segments capable of being shared as expansion segments are indicated by continuity segment links indicating a non-segment.” Id. (citing ’158 patent, col. 8, ll. 12-15). This language, however, does not specifically limit the plain meaning of “non-segment” to point to something other than the end of the program. Patent Owner also relies on the statements of a Declarant. Id. (citing Loy ¶¶ 52-53) (“A person of ordinary skill in the art would understand from reading the ’158 Patent that a ‘non-segment indicator’ does not associate to ‘nothing’ as suggested. Rather, it is a data element that indicates something other than a specific segment.”). Declarant, however, does not explain why the end of the program is not a data element indicating something other than a specific segment. The only support the expert cites to for his conclusion is the same language in the Specification relied upon in the brief, that the ’158 patent teaches that the “non-segment indicator” is used when there is a link to a “shared expansion.” Loy ¶ 52. As explained above, this language does Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 20 not limit the term and the expert does not explain why (or provide any supporting evidence) a person of ordinary skill would understand the term to exclude the end of the program, even though the end of the program is logically a “non-segment.” See App. Br. 21. The Examiner, on the other hand, finds that Figure 10 of the ’158 patent discloses that a non-segment indicator may point to the end of the program if the link is empty. Ans. 70. Patent Owner does not address this finding. See generally App. Br. 21; Reply Br. We therefore agree with the Examiner that Lavallee discloses the claimed “non-segment indicator.” For the foregoing reasons, we affirm the Examiner’s rejection of claims 15, 16, and 23 as anticipated by Lavallee. The Obviousness Rejection over Lavallee and Davenport The Examiner rejects claims 1-9, 11-14, 17, 22, 24-28, 32-35, 38-40, 48, and 49 as obvious over Lavallee and Davenport. Ans. 12-45. Patent Owner argues that the combination of Lavallee and Davenport would not have been obvious to a person of ordinary skill in the art. App. Br. 22-28. Specifically, according to Patent Owner a person of ordinary skill in the art would not have found the claimed “cues” and “transitions” obvious in light of Davenport’s disclosure of “micons” and “picons.” App. Br. 22-27. Patent Owner relies heavily on testimony from the named inventor of Davenport for this assertion: “a person of skill in the art would not have found it obvious to make the claimed invention by taking the Lavallee invention and adding affirmative cues, ‘micons,’ ‘picons’ or transitions.” App. Br. 22-23 (quoting Davenport ¶ 1). This testimony, however, is a broad Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 21 legal conclusion based on Davenport’s review of a product that is described by the Patent Owner as a “prototype of the invention.” App. Br. 22; Davenport Dec. ¶¶ 12-14. As discussed above, this testimony, which is not tied to the actual claims at issue, is entitled to little, if any weight. Therefore we are not persuaded by Davenport’s conclusion on non-obviousness. The other testimony relied upon by Patent Owner is similarly conclusory and does not provide any factual support tending to substantiate Patent Owner’s position. See Mills ¶ 30 (agreeing with Davenport’s testimony); Loy ¶¶ 55- 57, 67-70 (same); Bear ¶ 49; Strickland ¶ 20. Therefore, we find it similarly unpersuasive. Patent Owner also argues that Lavallee teaches away from using affirmative cues because it relies on negative feedback which “is a very different technique and provides a very different user experience than using cues.” App. Br. 24 (quoting Davenport ¶19) (citing Loy ¶¶ 67-68; Strickland ¶ 20; Bear ¶ 49; Mills ¶¶ 24-25). Patent Owner, however, does not point to any particular language in Lavallee that explicitly discourages adding affirmative cues. See generally, App. Br.; Reply Br. We are not persuaded that Lavallee teaches away from using affirmative cues. See Syntex LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed Cir. 2005) (“[A] reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant’s invention.”). Patent Owner contends that even if the cues from Davenport were added to Lavallee, such combination would require “completely reworking Lavallee’s design.” Id. (quoting Mills ¶ 25). The Examiner, however, finds that “cues are used to help facilitate selection of expansion content by Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 22 providing a visual indication thereby improving the interaction between the user and the program” and the results of such a combination would have been predicable to one of ordinary skill in the art because it “provides a visual indication that the option to link to expansion content exists.” Ans. 75; See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”). Moreover, the Examiner concludes that “one of ordinary skill in the art would be motivated to provide a cue in Lavallee so that an error message would not need to be generated, thereby improving the interaction between the user and the program.” Ans. 75. Patent Owner does not address or counter in the Reply Brief the Examiner’s articulated reasons for combining Lavallee and Davenport discussed in the Response to Arguments section, but rather repeats that the named inventor, Davenport, disagrees with the Examiner. Reply Br. 12-13. As explained above, we are not persuaded by these conclusions. We therefore find that the Examiner has provided an articulated reasoning with some rational underpinning to support a legal conclusion of obviousness. See KSR, 550 U.S. at 418. Based on the same assertions that a person of ordinary skill would not have combined the two references, Patent Owner argues that a person of skill in the art would not have found the “expansion cue indicator” recited by claims 32-34 obvious based on Davenport’s “micons” or “picons” as relied upon by the Examiner. App. Br. 26. For the reasons just discussed, we are not persuaded that the Examiner erred in concluding that a person of Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 23 ordinary skill in the art would have found it obvious to add the claimed “expansion cue indicator” based on the disclosure of Davenport. In addition, Patent Owner argues that claim 35 is not obvious over Lavallee and Davenport because Lavallee does not disclose “dynamically defined” segments and links. App. Br. 27 (citing Loy ¶¶ 26, 26, 50, and 57). Similarly, Patent owner asserts that claim 48 is not obvious over the two references because Lavallee does not disclose “dynamic determination” of segment termini and “dynamic linking.” App. Br. 27-28 (citing Mills ¶¶ 21- 23; Loy ¶¶ 49-51, 64; Bear ¶¶ 25-26). We are not persuaded that Lavallee has such deficiencies. The Examiner finds that “Lavallee discloses linking to an expansion segment and determining the first terminus . . . based on the temporal distance from the starting expansion decision point.” Ans. 84 (citing Lavallee, Fig. 3, col. 6, l. 49—col. 7, l. 23. The Examiner adds that Lavallee teaches that “a user can dynamically select to link to an expansion segment at different time codes.” Ans. 84 (citing Lavallee Figs. 3, 7A). Patent Owner does not address these additional findings. See generally, Reply Br. We are not persuaded of error in the Examiner’s findings. Thus, we affirm the Examiner’s obviousness rejection of claims 1-9, 11-14, 17, 22, 24-28, 32-35, 38-40, 48, and 49. The Obviousness Rejection over Lavallee and Roach The Examiner rejects claims 7-9, 41, 45, and 48 as obvious over Lavallee and Roach. Ans. 45-54. Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 24 Patent Owner argues that a person of ordinary skill in the art would not have combined the two references. App. Br. 29-30 (citing Loy ¶¶ 27, 58- 61; Bear ¶¶ 43, 44, 49, Mills ¶¶ 27, 29; Strickland ¶ 22). Patent Owner asserts that “combining invitational cues [disclosed by Roach] with Lavallee would require unraveling Lavallee’s design.” App. Br. 29 (citing Mills ¶ 25; Strickland ¶ 20; Davenport Decl. ¶¶ 1, 19; Loy ¶¶ 56-58; Bear ¶ 49). Patent Owner asserts that the mechanisms disclosed by Roach are so different from the claimed invention that a person of ordinary skill in the art would not have considered them to be relevant. App. Br. 31-32 (citing Loy ¶¶ 58-61, 68; Bear ¶¶ 40-45, 49; Mills ¶¶ 25-29; Strickland ¶¶ 22-23). We are not persuaded by this argument for the same reasons that we are not persuaded that a person of ordinary skill would not combine Lavallee with Davenport. Again, the testimony relied upon by Patent Owner is conclusory and does not provide any factual support tending to substantiate Patent Owner’s position. See (Mills ¶ 25; Strickland ¶ 20; Davenport Decl. ¶¶ 1, 19; Loy ¶¶56-58; Bear ¶¶44, 49). Also, the Examiner finds that “[a]dding cues as taught by Roach . . . would serve to improve the system of Lavallee by providing ‘visual’ cues at points where the expansion content is available.” Ans. 88 (citing Lavallee’s stated goal in col. 1, ll. 8-24). Patent Owner does not address or counter in the Reply Brief the Examiner’s articulated reasons for combining Roach and Davenport discussed in the Response to Arguments section. Reply Br. 14-16. Patent Owner also argues that a person of ordinary skill would not combine the two references because Roach is non-analogous art, dealing solely with computer video games. App. Br. 29-31 (citing Loy ¶¶ 58-61, 68; Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 25 Bear ¶¶ 40-45, 49; Mills ¶¶ 25-29; Strickland ¶¶ 22-23). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Klein, 647 F.3d 1343, 1348 (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). A “reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. at 1348 (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). The Examiner finds that Roach teaches a technique for “interactive movies” that does not need to be limited to video games. Ans. 89. In fact, Roach discusses the drawback of “traditional movie techniques” and improves upon those techniques by allowing for interactivity with the user. Id. (citing Roach col. 1, ll. 5-22 and col. 3, ll. 23-37). Moreover, the Examiner finds that Roach’s “interactive movie” is “stored content.” And Roach “teaches linking to optional expansion content from a first segment comprising a first stored content.” Ans. 90 (citing Roach col. 6, ll. 11-32). Patent Owner does not address or counter in the Reply Brief these findings. Reply Br. 14-16. Instead, Patent Owner refers to the same conclusory testimony relied upon in the Appeal Brief, which we find unpersuasive. We are not persuaded that Roach is non-analogous art. Roach is reasonably pertinent to Appellants’ problem, at least with respect to adding Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 26 optional expansion content to interactive movies. We thus find the Examiner’s reason to combine the teachings of Lavallee and Roach is supported by an articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion. With respect to claim 9, Patent Owner asserts that the “highlighting” limitation is a unique and nonobvious feature. App. Br. 32 (citing Davenport ¶ 13). For the reasons discussed earlier, we are not persuaded by Davenport’s testimony. Thus, we affirm the Examiner’s rejection of claims 7-9, 41, 45, and 48 as obvious over Lavallee and Roach. DECISION The Examiner’s decision rejecting claims 35 and 48 under 35 U.S.C. § 112, ¶ 1, 1 as failing to comply with the written description requirement is affirmed. The Examiner’s decision rejecting claims 15, 16, and 23 under 35 U.S.C. § 102 as anticipated by Lavallee is affirmed. The Examiner’s decision rejecting claims 1-9, 11-14, 17, 22, 24-28, 32-35, 38-40, 48, and 49 under 35 U.S.C. § 103(a) as obvious over Lavallee and Davenport is affirmed. The Examiner’s decision rejecting claims 7-9, 41, 45, and 48 under 35 U.S.C. § 103(a) as obvious over Lavallee and Roach is affirmed. AFFIRMED Appeal 2012-010447 Reexamination Control 90/011,365 U.S. Patent 6,393,158 B1 27 cu