Ex Parte Abernethy et al

Patent Trial and Appeal Board

Apr 13, 2016

11315382 (P.T.A.B. Apr. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111315,382 12/21/2005
35525 7590 04/15/2016
IBM CORP (YA)
C/O YEE & AS SOCIA TES PC
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Michael Negley Abernethy JR.
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.
AUS920050761US1 8435
EXAMINER
KURIEN, CHRISTEN A
ART UNIT PAPER NUMBER
2427
NOTIFICATION DATE DELIVERY MODE
04/15/2016 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL NEGLEY ABERNETHY JR.,
KUL VIR SINGH BHOGAL, TRAVIS M. GRIGSBY,
ROBERT NORRIS-LANCE KRENTLER, and
ALEXANDRE POLOZOFF 1
Appeal2014-005705
Application 11/315,382
Technology Center 2400
Before BRUCE R. WINSOR, KEVIN C. TROCK, and AMBER L. HAGY,
Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
("Non-Final Act.") of claims 1--4, 6-12, and 14--19, which are all claims
pending. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. (App. Br. 2.)
2 Claims 5 and 13 were canceled in an amendment filed July 14, 2011.
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Application 11/315,382
Introduction
According to Appellants, "[t]he present invention relates generally to
digital television and, more particularly, to advertising within digital
television. Still more particularly, the present invention relates to providing
local information in a digital video stream." (Spec. i-f 1.)
Exemplary Claim
Claim 1, reproduced below with the disputed limitation italicized, is
exemplary of the claimed subject matter:
1. A method in a digital video receiver, the method
compnsmg:
the digital video receiver retrieving preconfigured location
information;
the digital video receiver receiving a digital video stream,
wherein the digital video stream has embedded therein at least
one location information element and localized information
associated with each of the at least one location information
element, and wherein the at least one location information
element and the localized information are embedded in the
received digital video stream as metadata;
the digital video receiver detennining whether the
preconfigured location information matches a given one of the at
least one location information element embedded in the received
digital video stream;
the digital video receiver identifying at least a portion of
the localized information embedded in the received digital video
stream that is associated with the given one of the at least one
location information element; and
the digital video receiver presenting the identified
localized information with the digital video stream, wherein the
metadata comprises a first portion that designates the at least
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Application 11/315,382
one location information element and a second portion that
designates the localized information, and wherein the first
portion includes a first element identifj;ing a type for the at least
one location element and a second element associated with the
first element that is operable to locate where the localized
information is located in the second portion, and the second
portion includes a third element corresponding to each of the at
least one location element and a fourth element associated with
the third element that identifies the localized information
associated with its associated third element.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Thibadeau
Kadel Jr. ("Kadel")
Oral
US 5,432,542 July 11, 1995
US 2002/0184401 Al Dec. 5, 2002
US 6,670,971 Bl Dec. 30, 2003
REJECTIONS
Claims 1--4, 6, 7, 9--12, 14, and 16-19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Thibadeau and Kadel. (Non-Final Act.
3-12.)
Claims 8 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thibadeau, Kadel, and Oral. (Non-Final Act. 13.)
ISSUES
( 1) Whether the Examiner erred in finding the combination of
Thibadeau and Kadel teaches or suggests:
wherein the metadata comprises a first portion that designates
the at least one location information element and a second
portion that designates the localized information, and wherein
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the first portion includes a first element identifying a type for
the at least one location element and a second element
associated with the first element that is operable to locate where
the localized information is located in the second portion, and
the second portion includes a third element corresponding to
each of the at least one location element and a fourth element
associated with the third element that identifies the localized
information associated with its associated third element,
as recited in independent claim 1, and commensurately recited in
independent claims 9 and 16.
(2) Whether the Examiner erred in finding the combination of
Thibadeau, Kadel, and Oral teaches or suggests "wherein receiving the
digital video stream comprises streaming the digital video stream over the
Internet," as recited in dependent claim 8 and commensurately recited in
dependent claim 15.
ANALYSIS
We have reviewed the Examiner's rejections in light of the Appellants'
arguments the Examiner has erred. We disagree with Appellants'
conclusions and we adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken (Non-Final
Act. 3-13) and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellants' Appeal Brief. (Ans. 2-7.) We concur
with the conclusions reached by the Examiner, and we highlight the
following for emphasis. 3
3 Only those arguments made by Appellants have been considered in this
decision. Arguments Appellants did not make in the briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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The Examiner relies on Thibadeau as teaching the limitations of claim
1, except for the disputed limitation, which describes the structure of the
"metadata." (Non-Final Act. 3---6.) As to that limitation, the Examiner relies
on Kadel, which the Examiner finds teaches mapping and embedding I
encoding information within Internet-based communications data using
extensible markup language ("XML"). (Ans. 5; Non-Final Act. 7-9.)
Appellants argue the Examiner's rejection is in error because,
although Appellants concede Kadel describes hierarchical and type
structures that may be used in XML encoding, Appellants contend the
structures disclosed in Kadel are limited to use in "documents." (App. Br.
10.) We disagree. As the Examiner finds, and we agree, Kadel is not limited
to encoding only "documents," but also discloses "encoding information
within Internet-based communications data." (Ans. 5 (citing Kadel i-f 297);
see also Kadel i-f 74.) The Examiner additionally finds, and we agree, Kadel
teaches specific characteristics of XML coding that may be used in the
listing of localized information embedded in the video stream of Thibadeau,
"such as geographical location pertaining to the metadata that is embedded
in a received digital video stream." (Ans. 3.)
Appellants additionally argue the Examiner has failed to map all of
the elements of the disputed limitation to the prior art, contending "the
Examiner fails to address the self-locate feature that is recited in Claim 1,
where the 'second element' is operable to locate where the localized
information is located in the 'second portion'." (Reply Br. 3.) We disagree.
In making this argument, Appellants cite only to the Examiner's Answer.
(Reply Br. 2-3, citing Ans. 2--4.) The Examiner's Answer, however, does
not purport to repeat the complete mapping as stated in the Examiner's Non-
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Final Rejection. As the Examiner finds in the Non-Final Rejection, and we
agree, Kadel discloses use of XML to encode information, in which "[ t ]he
structures defined by an XML schema document determine the hierarchical
and type structure allowed in XML instance documents, and this structure is
paralleled again in the information elements (with attributes and member
elements) constructed on parsing an instance." (Non-Final Act. 7.) The
Examiner makes corresponding findings in the Non-Final Rejection for each
of the two "portion[ s ]" and all four of the "element[ s ]" recited in the
disputed limitation of claim 1. (Id. at 7-9.) Appellants have not
persuasively rebutted these findings.
As the Examiner further finds, and we agree, "[ t ]he claims citing the
first portion and second portion are actually dealing with the xml metadata"
as illustrated in Figure 4 of Appellants' Specification (reproduced below),
which purports to illustrate example metadata for the claimed invention
encoded using XML. (Ans. 4 (Spec. i-f 35; Fig. 4.))
< complexType name= "Loca!lnformation">

< comp!exType > . . . 400
< Locallnlormation > FIG. 4
78660
Hours:Bam ~ 11pm
< /Local!nformation >
< Loc-0llnformation>
< ZIPCode > 90201
< Loe Hours:9am - 1 Oprn

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Specification Figure 4: illustrates an example of metadata with
localized information encoded using XML (Spec. f 35.)
Appellants' arguments confirm the "self-locate feature" of claim 1, as
characterized by Appellants, is disclosed by use of standard XML to encode
data. In particular, according to Appellants, the "second portion that
designates the localized information," as recited in claim 1, is shown in
Figure 4 as "." (See App. Br.
4.) Also according to Appellants, the "localized information" referenced by
the claimed "second portion" is contained in the claimed "fourth element,"
which, further according to Appellants, is shown in the "bottom half' of
Figure 4 as the information encoded with the "" tag. (See App.
Br. 5.) As the Examiner finds, and we agree, the XML encoding depicted in
Figure 4 follows patterns of XML schemas known in the art. (Ans. 3--4.)
Thus, Appellants are reading what they call the "self-locate" feature of claim
1 onto a well-known structure of XML schema patterns, wherein a tag may
be created (e.g., "LocalText" in Figure 4) to designate a particular type of
encoded information that will, when the tag is used, designate the location of
that particular information in an encoded information stream (e.g., the text
"Hours 9am- lOpm" is encoded with the tag " ...
" in Figure 4). We agree with the Examiner that Kadel's
disclosure of use of XML encoding includes disclosure of XML schema
patterns that were well-known in the art, and thus teaches or suggests the
disputed metadata limitation, including both of the "portions" and all of the
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four "elements" recited therein. (Non-Final Act. 7-9; Ans. 3--4.) Appellants
have not persuasively rebutted these findings.
Appellants additionally argue the Examiner's combination of
Thibadeau and Kadel is in error because the references are not properly
combined. In particular, Appellants contend "Tribadeau [sic, Thibadeau]
has no need to define information types in a document markup language
since ... it is instead directed to an information broadcasting system ... for
which Kadel's XML is not compatible .... " (App. Br. 11.) This argument
is not persuasive because, as we noted supra, the Examiner correctly finds
Kadel's teachings are not limited to a "document" environment (Ans. 3), and
also Thibadeau' s teachings are not limited to television broadcasting, but
also encompass an "Internet-based environment[]." (Ans. 5; Thibadeau col.
7, 11. 19-22: "Existing LAN and WAN transmission, including concepts
such as using unused network capacity to broadcast such data in the
background over any existing network, also apply.") In addition,
Appellants' argument is also unpersuasive to the extent it relies on the
premise that the references cannot be physically combined. The test for
obviousness "is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,
425 (CCPA 1981) (citations omitted).
Appellants also argue the Examiner's combination of references is
improper because the Examiner "fails to describe why the use of XML
would provide an advantage to the teachings of Thibadeau - and therefore
has failed to comply with the KSR-mandated articulated reasoning with
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rationale [sic, rational] underpinnings requirements." (App. Br. 10.) We
disagree. We recognize the Examiner must articulate "reasoning with some
rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). However, the Examiner's
reasoning need not appear in, or be suggested by, one or more of the
references on which the Examiner relies upon. Instead, a reason to combine
teachings from the prior art "may be found in explicit or implicit teachings
within the references themselves, from the ordinary knowledge of those
skilled in the art, or from the nature of the problem to be solved." WMS
Gaming Inc. v. Int'! Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999)
(citing In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). "Under the
correct [obviousness] analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007).
In the instant appeal, the Examiner has provided a rational supporting
motivation by a person of ordinary skill in the art to achieve the claimed
subject matter:
[A ]t the time of invention, it would have been obvious to a person
of ordinary skill in the art to incorporate the XML mapping &
encoding strategies by Kadel into the mapping & embedding
method by Thibadeau. The suggestion/motivation would have
been to provide XML, a well-known mark-up language standard,
that enables crucial features of a system and/or framework by
which data is seen via a standard, conventionalized interface ...
for the purposes of aiding development of information-handling
applications.
(Ans. 5---6.) Appellants have not provided persuasive evidence or line of
reasoning explaining why such rationale is erroneous or why a person of
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ordinary skill in the art would not have reached the conclusions reached by
the Examiner. See DyStar Textilfarben GmbH & Co. Deutsch/and KG v.
CH Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) ("[T]he proper
question is whether the ordinary artisan possesses knowledge and skills
rendering him capable of combining the prior art references."). At most,
Appellants have presented arguments that, as discussed above, are premised
on an overly narrow and thus factually incorrect reading of the cited
references. Consequently, we are not persuaded that the Examiner failed to
articulate a sufficient rationale for combining the teachings of the cited
references.
Appellants additionally assert "the Thibadeau and Kadel references
are non-analogous ... [and] a person of ordinary skill in the art would not
have been motivated to combine the teachings of such disparate, unrelated
art together." (App. Br. 11.) As support for their argument, Appellants
contend the references are nonanalogous because they are directed to
different USPTO search classifications. (App. Br. 11.) Even if true, that is
not persuasive evidence of nonanalogous art. See In re Mlot-Fijalkowski,
676 F.2d 666, 679 n.5 (CCPA 1982) ("Such evidence is inherently weak
also, because considerations in forming a classification system differ from
those relating to a person of ordinary skill seeking solution for a particular
problem." (Citation omitted)).
Moreover, the cited references need not be directed to identical
purposes or problems as the claimed invention to constitute analogous art.
Rather, the test for whether a reference is from an analogous art is two-fold:
"( 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
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inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved." In re Clay, 966
F.2d 656, 658-59 (Fed. Cir. 1992) (citing In re Deminski, 796 F.2d 436, 442
(Fed. Cir. 1986)). As the Examiner finds, and we agree:
Thibadeau and Kadel are analogous art because they are from
same field of endeavor with respect to mapping &
embedding/encoding information within Internet-based
communications data since one of ordinary skill in the art would
have been aware of Internet-based communications problems
and issues of mapping & embedding/encoding information
within such data and addressing such Internet-based
communications problems and issues in Thibadeau and Kadel
would have had a reasonable expectation of success.
(Ans. 5.) Thus, we are not persuaded by Appellants' argument the cited
references are nonanalogous and hence improperly combined. For similar
reasons, we are also unpersuaded by Appellants' argument there is no
"common" person of ordinary skill in the art. (App. Br. 11.)
For the foregoing reasons, we are unpersuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of independent claim 1 and also
claims 2--4, 6, 7, 9-12, 14, and 16-19, which Appellants argue collectively
with claim 1. (App. Br. 8.) We, therefore, sustain that rejection.
Appellants do not present separate substantive arguments for
dependent claims 8 and 15, which stand rejected over Thibadeau, Kadel, and
an additional reference (Oral). (Non-Final Act. 13.) Rather, Appellants
"urge error" in the rejection of claims 8 and 15 "for similar reasons to those
given above with respect to Claim 1." (App. Br. 12.) We, therefore, sustain
the rejection of claims 8 and 15 for the same reasons as for claim 1.
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DECISION
For the above reasons, the Examiner's rejections of claims 1--4, 6-12,
and 14--19 are affirmed.
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).
AFFIRMED
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