Ex Parte Deutmeyer et al

Patent Trial and Appeal Board

Sep 4, 2014

11052265 (P.T.A.B. Sep. 4, 2014)

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.
11/052,265 02/07/2005 Hans J. Deutmeyer 1073.004 4742
22186 7590 09/05/2014
MENDELSOHN, DRUCKER, & DUNLEAVY, P.C.
1500 JOHN F. KENNEDY BLVD., SUITE 312
PHILADELPHIA, PA 19102
EXAMINER
FLYNN, RANDY A
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
09/05/2014 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 HANS J. DEUTMEYER and CRAIG D. CUTTNER
____________

Appeal 2012–004882
Application 11/052,265
Technology Center 2400
____________

Before JEAN R. HOMERE, JEFFREY S. SMITH, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4–12, 14–19, and 22–32. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to updating information fields included
in multimedia content (Spec. 1:4–5).
Claim 1, which is illustrative, reads as follows:
1. A computer-implemented method comprising:
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recording, at a recording time, composite multimedia
content comprising first primary feed and first original
supplemental information (SI), wherein the first original SI is
spatially differentiated from the first primary feed in the
composite multimedia content;
retrieving, at a playback time, the recorded composite
multimedia content;
replacing the first original SI with first replacement SI to
form updated composite multimedia content comprising the
first primary feed and the first replacement SI, wherein:
the first replacement SI is spatially differentiated
from the first primary feed in the updated composite
multimedia content;
replacing the first original SI with the first
replacement SI comprises:
providing, to a remotely located update
manager, a tag associated with the first original SI;
and
receiving the first replacement SI from the
update manager in response to the provision of the
tag to the update manager; and
presenting the updated composite multimedia content
comprising the first replacement SI.
Rejections on Appeal
Claims 1, 4–9, 14, 15, 17–19, 22, 23, 28, and 32 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bjorgan (US 2003/0066078
A1; Apr. 3, 2003), Candelore (US 2005/0028193 A1; Feb. 3, 2005), Peliotis
(US 2002/0065678 A1; May 30, 2002), and Ducheneaut (US 7,870,589 B2;
Jan. 11, 2011) (see Ans. 5–15).
Claims 10–12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bjorgan, Candelore, Peliotis, Ducheneaut, and Miller (US
2003/0046690 A1; Mar. 6, 2003) (see Ans. 15–17).
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Claims 16, 24–26, 29, and 30 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bjorgan, Candelore, Peliotis, Ducheneaut, and
Siann (US 2003/0120541 A1; June 26, 2003) (see Ans. 17–19).
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bjorgan, Candelore, Peliotis, Ducheneaut, and Billmaier
(US 2004/0003406 A1; Jan. 1, 2004) (see Ans. 19–21).
Claim 31 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bjorgan, Candelore, Peliotis, Ducheneaut, Siann, and
Wachtfogel (US 2002/0138831 A1; Sept. 26, 2002) (see Ans. 21–22).
Issues on Appeal
Does the Examiner fail to provide sufficient rationale for combining
the teachings of Bjorgan, Candelore, Peliotis, and Ducheneaut?
Does the combination of Bjorgan, Candelore, Peliotis, and
Ducheneaut teach “providing, to a remotely located update manager, a tag
associated with the first original SI,” as recited in claim 1?
Does the Examiner fail to address certain limitations of claim 32 and
thus fail to make a prime facie case of obviousness?
Does the combination of Bjorgan, Candelore, Peliotis, Ducheneaut,
and Siann teach “securely transmitting the tag to the originator of the tag via
a network,” as recited in claim 24?

ANALYSIS
We refer herein to Appellants’ Appeal Brief filed July 26, 2011
(“App. Br.”), the Examiner’s Answer mailed December 1, 2011 (“Ans.”),
and Appellants’ Reply Brief filed January 26, 2012 (“Reply Br.”).
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Claims 1, 4–12, 14–19, 22, 23, and 27–29
Appellants argue the Examiner does not show it would have been
obvious to one of ordinary skill in the art at the time of the invention to
combine the teachings of Bjorgan and Candelore (App. Br. 6, 7). The
Examiner explains it would have been obvious to combine the teachings of
Bjorgan and Candelore “by using the content data packets and content
descriptor data already present in Bjorgan with the method disclosed in
Candelore, in order to create a commercially viable system that would allow
an end viewer of video content to tailor what they watch and manipulate
content” (Ans. 7). Appellants argue the combination of Bjorgan and
Candelore is unnecessary because Candelore alone provides the benefits
cited by the Examiner (App. Br. 7). Appellants’ argument is not persuasive.
As the Examiner explains (Ans. 24), the cited benefits are not taught in
Bjorgan, and, therefore, there would have been a benefit to incorporating the
teachings of Candelore into Bjoran. As result, we find the Examiner
provides articulated reasoning with some rational underpinning that the cited
combination would have been obvious to one of ordinary skill in the art. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellants argue the Examiner does not show it would have been
obvious to one of ordinary skill in the art at the time of the invention to
combine the teachings of Peliotis with the teachings of Bjorgan and
Candelore (App. Br. 7). Specifically, Appellants argue the Examiner does
not explain how the benefits of Peliotis relate to the invention of claim 1
(App. Br. 7). Appellants’ argument is not persuasive. The Examiner
explains how the teachings of Peliotis relate to certain limitations of claim 1
(Ans. 7, 8), and provides a reason why it would have been obvious to
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combine the teachings of Peliotis with Bjorgan and Candelore (Ans. 8).
Appellants do not identify any specific errors in the Examiner’s analysis.
Appellants argue the Examiner improperly combines Bjorgan,
Candelore, Peliotis, and Ducheneaut in piecemeal fashion and does not
explain why and how it would have been obvious to combine all the
references into a single integrated system or process (App. Br. 7, 8).
Appellants’ argument is not persuasive. The Examiner explains the relevant
teachings of each reference and provides a rationale for why it would have
been obvious to combine the teachings of each reference with the others
(Ans. 5–9). Further, contrary to Appellants’ argument, the Examiner does
not need to show how to physically integrate the individual systems of each
reference into a single system. In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“To justify combining reference teachings in support of a rejection it
is not necessary that a device shown in one reference can be physically
inserted into the device shown in the other.”). Rather, “the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” Id.
Appellants argue the combination of Peliotis and Ducheneaut does not
teach “providing, to a remotely located update manager, a tag associated
with the first original SI,” as recited in claim 1 (App. Br. 8). Specifically,
Appellants argue the tags taught by Peliotis and Ducheneaut are associated
with the first primary feed, not the first original SI (App. Br. 8). Appellants’
argument is not persuasive, because the Examiner does not rely on Peliotis
and Ducheneaut alone for the disputed feature. The Examiner cites to
Bjorgan and Candelore as teaching multimedia content comprising first
original SI, and cites to Peliotis and Ducheneaut as teaching providing a tag
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associated with multimedia content to a remotely located update manager
(Ans. 27). The Examiner explains the disputed limitation of claim 1 is
taught by incorporating the first original SI in Bjorgan and Candelore with
the tag and update manager in Peliotis and Ducheneaut (Ans. 27).
Appellants’ argument, however, does not address the combined teachings of
the references as they apply to the disputed claim limitation. See In re
Keller, 642 F.2d at 426 (“[O]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.”).
Appellants argue the patentability of claims 1, 22, and 23 together
based on the arguments addressed above (App. Br. 8, 9). Because those
arguments are not persuasive, we sustain the Examiner’s rejection of claims
1, 22, and 23. Appellants present no separate arguments for claims 4–12,
14–19, and 27–29, and rely on the same reasons for patentability stated for
claims 1, 22, and 23 (App. Br. 9). As a result, we also sustain the
Examiner’s rejections of claims 4–12, 14–19, and 27–29.
Claim 32
Appellants argue the Examiner did not address all the limitations of
claim 32, because the Examiner does not indicate where the cited references
teach the limitation “use, at playback time, the tag to retrieve the
corresponding information for the first original SI from the tag archive; and
use the retrieved corresponding information to identify the first replacement
SI” in claim 32 (App. Br. 5, 6). Appellants’ argument is not persuasive.
The Examiner’s rejection of claim 32 incorporates the rejection of claim 1
(Ans. 15). The Examiner’s rejection of claim 1 cites to paragraph 23 of
Peliotis as teaching limitations in claim 1 similar to the disputed limitations
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in claim 32 (Ans. 8, 23). The Examiner explains (Ans. 23) paragraph 23 of
Peliotis teaches a comparator using a tag to determine a particular pointer for
a video segment, which corresponds to the limitation in claim 32 of using a
tag to retrieve corresponding information for the first original SI. The
Examiner also explains (Ans. 23) paragraph 23 of Peliotis teaches using the
pointer to select a video segment from the database, which corresponds to
the limitation in claim 32 of using the retrieved corresponding information to
identify the first replacement SI. Therefore, we conclude Appellants were
sufficiently notified of the rejection of claim 32 and were able to respond to
it. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (the PTO satisfies
its initial burden when “the applicant is properly notified and able to
respond”). Accordingly, we sustain the Examiner’s rejection of claim 32.
Claims 24–26, 30, and 31
Appellants argue the combination of Peliotis and Siann does not teach
“securely transmitting the tag to the originator of the tag via a network,” as
recited in claim 24 (App. Br. 9). Specifically, Appellants argue Peliotis does
not teach transmitting the tag to the originator of the tag (App. Br. 9). We
agree with Appellants. The Examiner points to paragraphs 20 and 34, as
well as Figures 1 and 9, of Peliotis as teaching transmitting the tag to the
originator of the tag (Ans. 17, 28). Figure 1 and paragraph 20 of Peliotis do
not show or discuss transmitting a tag to the tag generator 20 (Peliotis Fig. 1;
¶ 20). Figure 9 and paragraph 34 teach transmitting video segments from
the filter comparator 198 in the set top box 194 to the video storage 186 in
the head end 182 (Peliotis Fig. 9; ¶ 34). However, as Appellants point
(Reply Br. 4), the video segments being transmitted to the head end 182 are
not tags (see Peliotis ¶ 34). Therefore, the Examiner does not show how
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Peliotis teaches transmitting a tag to the originator of the tag. The Examiner
points to Ducheneaut (Ans. 17, 29) as teaching the sending of a request with
identification information. However, as Appellants point out (Reply Br. 5),
the Examiner does not show where or how Ducheneaut teaches transmitting
a tag to the originator of the tag. Therefore, we do not sustain the
Examiner’s rejection of claim 24. Because claims 25, 26, 30, and 31 depend
from claim 24 (App. Br. 9), we also do not sustain the Examiner’s rejections
of claims 25, 26, 30, and 31.

DECISION
The decision of the Examiner rejecting claims 1, 4–12, 14–19, 22, 23,
27–29, and 32 is affirmed.
The decision of the Examiner rejecting claims 24–26, 30, and 31 is
reversed.
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-IN-PART