Ex Parte Cohen et al

Patent Trial and Appeal BoardMar 10, 2014

11807353 (P.T.A.B. Mar. 10, 2014)

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. 11/807,353 05/25/2007 Alexander J. Cohen SE1-0466-US 4444 80118 7590 03/10/2014 Constellation Law Group, PLLC P.O. Box 580 Tracyton, WA 98393 EXAMINER SHEPARD, JUSTIN E ART UNIT PAPER NUMBER 2424 MAIL DATE DELIVERY MODE 03/10/2014 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 ALEXANDER J. COHEN, EDWARD K.Y. JUNG, ROYCE A. LEVIEN, ROBERT W. LORD, MARK A. MALAMUD, WILLIAM HENRY MANGIONE-SMITH, JOHN D. RINALDO, JR. and CLARENCE T. TEGREENE ____________________ Appeal 2011-009209 Application 11/807,353 Technology Center 2400 ____________________ Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and IRVIN E. BRANCH, Administrative Patent Judges. Per Curiam DECISION ON APPEAL Appeal 2011-009209 Application 11/807,353 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–26 and 28–58. We have jurisdiction under 35 U.S.C. § 6(b). Claim 27 is canceled. We affirm. Illustrative Claim Appellants’ disclosure relates to incorporation of substitute altered content in a derivative version of a media work in accordance with applicable substitution guidelines. Abstract. Claim 1, reproduced below with the disputed limitation italicized, is illustrative of the claimed subject matter: 1. A device-implemented content substitution method for media works comprising: identifying, by a processing system of the device, a constituent portion of a composite media work, wherein the constituent portion is capable of incorporating a content alteration of one or more alterable component elements; and providing, by the processing system of the device, accessibility to applicable alteration guidelines regarding a proposed derivative version of the composite media work having substitute content to publicize or promote a topic related to a real-world venture, the providing including providing accessibility to the applicable alteration guidelines via a hyperlink incorporated in a derivative version of the composite media work. Srinivasan Sugahara Ogawa Hendricks Kim US 2001/0023436 A1 US 2002/0146238 A1 US 2003/0033202 A1 US 2003/0145323 A1 US 2003/0156134 A1 Sept. 20, 2001 Oct. 10, 2002 Feb. 13, 2003 July 31, 2003 Aug. 21, 2003 Appeal 2011-009209 Application 11/807,353 3 McIntyre Candelore Marler Mankovitz US 2004/0194128 A1 US 2005/0028193 A1 US 2005/0028217 A1 US 2006/0271980 A1 Sept. 30, 2004 Feb. 3, 2005 Feb. 3, 2005 Nov. 30, 2006 Rejections The Examiner rejected: Claims 1–12, 14, 16, 19–26, 34, 37–40, 43–54, and 56 under 35 U.S.C. § 103(a) as unpatentable over Candelore in view of Marler; Claims 13, 17, 55, and 57 under 35 U.S.C. § 103(a) as unpatentable over Candelore in view of Marler and McIntyre; Claim 15 under 35 U.S.C. § 103(a) as unpatentable over Candelore in view of Marler and Kim; Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Candelore in view of Marler, McIntyre, and Ogawa; Claims 28, 29, and 58 under 35 U.S.C. § 103(a) as unpatentable over Candelore in view of Marler and Mankovitz; Claims 30, 31, and 41 under 35 U.S.C. § 103(a) as unpatentable over Candelore in view of Marler and Hendricks; Claims 32 and 42 under 35 U.S.C. § 103(a) as unpatentable over Candelore in view of Marler and Sugahara; Claim 33 under 35 U.S.C. § 103(a) as unpatentable over Candelore in view of Marler, Sugahara, and Hendricks; and Claims 35 and 36 under 35 U.S.C. § 103(a) as unpatentable over Candelore in view of Marler and Srinivasan. Ans. 3–30. Appeal 2011-009209 Application 11/807,353 4 ANALYSIS Herein we refer to the Appeal Brief (“App. Br.” filed Nov. 19, 2010) and the Answer (“Ans.” mailed Feb 3, 2011) for the respective positions of Appellants and the Examiner. We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. We disagree with Appellants’ conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Answer in response to Appellants’ Appeal Brief (see Ans. 4–51). However, we highlight and address specific findings and arguments for emphasis as follows. Rejection of claim 1 over Marler and Candelore Appellants argue the Examiner erred in rejecting claim 1 because, inter alia: 1) “Marler is silent with respect to incorporating a hyperlink in a derivative version of a composite media work that enables access to ‘applicable alteration guidelines,’ as presently recited” (App. Br. 32 (emphasis omitted)); 2) “Candelore provides no teaching or suggestion to make the recited ‘applicable alteration guidelines’ accessible ‘via a hyperlink incorporated in a derivative version of the composite media work” (id. at 33); 3) Marler and Candelore’s “prescribed substitution criteria is merely used to determine whether content substitution should be performed without guidelines” (id.); and Appeal 2011-009209 Application 11/807,353 5 4) The Examiner “is interpreting Candelore and Marler through the lens of Applicants’ application, which is impermissible hindsight use” and/or “relying on ‘personal knowledge’ and/or is taking ‘official notice’ of one or more factors to reach the factual conclusion of what the cited technical material ‘teaches’” (id. at 34). Appellants’ arguments do not persuade us of error for the reasons stated by the Examiner (see, e.g., Ans. 31–37). Additionally, to the extent Appellants argue the references individually, we are unpersuaded of error because the rejection is based on what the combined teachings of the references would have taught or suggested to one skilled in the art. To the extent Appellants argue the references do not recite the claim limitation for which they are cited, we are unpersuaded because a reference is considered also for what it teaches, not just what it recites. We are unpersuaded that the combination of Marler and Candelore teaches prescribed substitution criteria used merely to determine whether content substitution should be performed without guidelines (App. Br. 33) because, as the Examiner finds, Appellants’ interpretation of the references lacks persuasive evidentiary support (Ans. 36). Appellants’ arguments do not persuade us of error in the Examiner’s finding that Marler teaches a system wherein a URL is included into a media signal and includes instructions as to where the [ancillary] data is located. Combining this with the system described in Candelore, which teaches providing applicable alteration guidelines for a derivative version, one of ordinary skill in the art would recognize that the ancillary data could be an alternate AD or logo as disclosed by Candelore, which as it is provided via a URL, meets the limitation as claimed. Ans. 35. Appeal 2011-009209 Application 11/807,353 6 We are not persuaded of error by Appellants’ argument that the rejection is based on hindsight, personal knowledge, and/or unstated official notice (App. Br. 34) because the allegation is not supported by sufficient persuasive argument or evidence that the Examiner’s rejection does more than take into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from the applicant’s disclosure. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). Accordingly, we sustain the Examiner’s rejection of claim 1. Regarding Appellants’ remaining arguments, we refer to the Examiner’s findings and conclusion, which we have adopted (supra). CONCLUSIONS On the record before us we conclude the Examiner did not err in rejecting claims 1–26 and 28–58 as obvious. DECISION For the above reasons, the Examiner’s rejection of claims 1–26 and 28–58 is 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)(1)(iv). AFFIRMED ke