Ex Parte Hardacker et al

Patent Trial and Appeal Board

Apr 22, 2016

11737363 (P.T.A.B. Apr. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111737,363 04/19/2007 Robert Hardacker
36738 7590 04/26/2016
ROGITZ & AS SOCIA TES
750B STREET
SUITE 3120
SAN DIEGO, CA 92101
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.
50W8702.0l 5487
EXAMINER
CHEN,CAIY
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
04/26/2016 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT HARDACKER, BRANT CANDELORE, and
CHRIS READ
Appeal2014-007869
Application 11/737,363
Technology Center 2400
Before ST. JOHN COURTENAY III, TERRENCE W. McMILLIN and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Office Action, mailed January 8, 2014, of claims 1-8, 10-18, 20, 31and32.
Claims 9, 19 and 21-30 are cancelled. (See Amendment filed June 12,
2012). We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Invention
The claimed invention on appeal is directed to: "an apparatus and a
method that allows a display device to provide an enhanced display that
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Application 11/737,363
includes additional information related to segments of the received video
program." (Spec. i-f 2).
Representative Claim
1. An apparatus for providing information related to a video
program, the apparatus comprising:
a video display that receives the video program from a
source that can be paused and displays the video program to a
user;
[L 1] a content identifier that also receives the video
program as it is displayed to the user and identifies the video
program and estimates a playback position within the video
program;
an information processor that determines if there is
additional information related to the playback position within the
video program and, if so, obtains the additional information; and
a presentation unit that presents the additional information
to the user.
(Emphasis added regarding the contested limitation; labeled as "LI").
Rejections
A. Claims 1, 4, 5, 10, 11, 14, 15, 20, 31, and 32 are rejected under 35
U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of Lemmons (US 2003/0028873 Al; published
February 6, 2003), and Rosenberg (US 2002/0100041 Al;
published July 25, 2002). 1
1 The Examiner's heading of rejection A incorrectly includes cancelled
claim 21. (Ans. 2). The heading of rejection A also incorrectly includes
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B. Claims 2, 3, 6, 7, 12, 13, 16, and 17 are rejected under 35 U.S.C.
§ 103 (a) as being obvious over the combined teachings and
suggestions of Lemmons, Rosenberg, and Goldstein (US
5,410,326; issued April 25, 1995).
C. Claims 8 and 18 are rejected under 35 U.S.C. §103(a) as being
obvious over the combined teachings and suggestions of
Lemmons, Rosenberg, and Tsuchida et al. (US 2002/0194592 Al;
published December 19, 2002).
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of all claims
rejected under rejection A on the basis of representative claim 1. See 37
C.F.R. § 41.37(c)(l)(iv). Also based upon Appellants' arguments, we
decide the appeal of all claims rejected under rejection B on the basis of
representative claim 3. We address rejection C, infra.
Contentions
Under a first heading referencing the claims rejected under Rejection
A, 2 Appellants contend, without reference to a specific claim, that Lemmons
does not teach identifj;ing the video program (App. Br. 3--4):
The allegation is clear reversible error that Lemmons,
paragraphs 70 and 78-83 and figure 11 teaches receiving the
video program as it is displayed to the user, and identifying the
claims 3 and 13, for which detailed statements of rejection are set forth
under rejection B. (Ans. 2, 6, 8-9). The Examiner's heading of rejection A
(Ans. 2) further omits claim 15, although a statement of rejection for claim
15 is set forth under rejection A. (Ans. 5).
2 Seen. I, supra.
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Application 11/737,363
video program, and estimating a playback position within the
video program. Paragraph 70 discusses automatically
designating advertising space in video by recognizing an object
in the video, nowhere discussing identifying the video program.
Paragraphs 78 and 79 further explicate that when an object is
found, a database is searched for an attribute of that object that
defines a "label" which is coded into XML and superimposed on
the object. Paragraphs 80-83 appear to discuss another version
of the process above.
In none of the relied-upon subject matter is the video
program itself ever identified.
The Examiner disagrees (Ans. 12). The Examiner finds Lemmons
teaches or suggests, "a content identifier that also receives the video
program as it is displayed to the user and identifies the video program,"
within the meaning of claim 1 :
(As described in the passage in para. 7[0], [Lemmons] states that
"recognized pattern[s] may include actual objects. If a pattern
has not been recognized, the process returns to step 1102 and
continues applying the pattern recognition component to the
current video presentation"). In this case, it is concluded that by
applying the pattern recognition technique of the set top box in
Figure 1, the video scene of Figure 1 is recognized, then the
object [Pizza Box] of the video program is also recognized
therefore the insertion of the ad "Paul's Pizza" can be performed
(para. 43, para. 71 ). Appellant further traverses that the pattern
recognition only identifies the object of the video program but
not the video program itself, this traversal is baseless because the
object is part of the video program, [thus] the identification of
the object would imply the identification of the video program.
(Ans. 12; see also Ans. 3, statement of rejection for claim 1).
Under a second heading (App. Br. 5) referencing all claims rejected
under Rejection B, Appellants further contend the tertiary Goldstein
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Application 11/737,363
reference does not teach or suggest the same claimed additional information
recited in claim 1 :
The claimed additional information [(re: claims 2, 3)] has an
antecedent - it is related to a playback position within a video
program [(see claim 1 )]. In contrast, the relied-upon subject
matter from Goldstein pithily describes presenting
advertisements from a cable head end on a remote control
without ever tying those advertisements to a program being
watched, much less to a particular playback position in the
program. Instead, Goldstein's advertisements appear to [] bear no
relation to the program being watched but are downloaded at the
discretion of the cable provider.
The Examiner disagrees, and finds the cited combination of references
teaches or suggests the claimed contested additional information:
it is the combination of Lemmons, Rosenburg, and Goldstein
[that] disclose[s] the entire claim limitation of "wherein the
additional information is presented to the user on a remote
control for the video display[.]" [F]irst of all, Lemmons
disclose[ s] the additional information relating the playback
position within the video content [that] is the ad of the "Paurs
Pizzeria" as shown in Fig. 2 and Fig. 3A, however Lemmon is
silent on presenting the AD information on a remote control for
the video display, but Goldstein disclose[s] the concept of
presenting the AD information on a remote control which allows
a user to place an order (Fig. 6-7 A, Fig. 8-9, col. 6, lines 1-25),
as such, the modification of Lemmons includ[ing] Goldstein's
remote control feature would arrive at a conclusion of Lemmons
system that has a remote control which displays and presents "the
AD of Paul's Pizzeria" to allow a user to place an order. As such,
the above mentioned claim limitation is met by the combination
of Lemmons, Rosenburg, and Goldstein.
(Ans. 13, emphasis added).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We disagree with Appellants' arguments, and we adopt as our
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Application 11/737,363
own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellants' arguments. (Ans. 11-13.) However,
we highlight and address specific findings and arguments for emphasis in
our analysis below.
Rejection A of claims 1, 4, 5, 10, 11, 14, 15, 20, 31, and 32
Regarding Appellants' first argument (advanced without reference to
a particular claim, App. Br. 3--4), we consider claim 1 as representative of all
claims rejected under rejection A. See Grouping of Claims, supra
Issue: Under§ 103, did the Examiner err by finding the cited
combination of Lemmons and Rosenberg would have taught or suggested
contested limitation L 1: "a content identifier that also receives the video
program as it is displayed to the user and identifies the video program and
estimates a playback position within the video program," within the meaning
of representative claim 1? (Emphasis added).
Claim Construction
This appeal turns on claim construction. As an initial matter of claim
construction, we look to the Specification for context regarding the contested
"content identifier" that "identifies the video program .... " (Claim 1 ).
Regarding the recited "video program," we find Appellants' Specification
does not provide notice of a limiting definition of "video program" and
Appellants do not argue a definition.
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Regarding the recited "content identijzer," the Specification describes
several exemplary, non-limiting references to identification of content: "A
content identifier identifies a segment of interest in the video content." i-f 3,
"[t]he video content 116 is also provided to a content identifier 104 that
identifies the video content and estimates a playback position within the
video content." i-f 21, " [ t ]he content identifier 104 identifies the content 116
that is being viewed . .. "i-f 23, and, "[t]he video content is identified ... "
i-fi-132, 34 and 36. (Emphasis added).
During patent examination, a claim is given its broadest reasonable
construction "in light of the specification as it would be interpreted by one of
ordinary skill in the art." In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). However, such an interpretation must not import
limitations from the Specification into the claims. "[A ]lthough the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those embodiments
... claims may embrace 'different subject matter than is illustrated in the
specific embodiments in the specification."' Phillips v. A WH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005) (en bane) (citations and internal quotation
marks omitted).
Here, the Examiner refers to Lemmons' recognition of patterns of
video content which may include actual objects of interest: "In this case, it
is concluded that by applying the pattern recognition technique of the set top
box in Figure 1, the video scene of Figure 1 is recognized, then the object
[Pizza Box] of the video program is also recognized [,] therefore the
insertion of the ad "Paul's Pizza" can be performed (para. 43, para. 71)."
(Ans. 12). The Examiner further reasons: "because the object is part of the
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video program, the identification of the object would imply the identification
of the video program." (Ans. 12, emphasis added). Based on this reasoning,
the Examiner finds: "Therefore, the claim limitation 'a content identifier that
also receives the video program as it is displayed to the user and identifies
the video program' is met by Lemmons." (Id.). 3
We note claim 1 is silent regarding how the "video program" is
identified by the "content identifier." Moreover, Appellants have not
provided any rebuttal evidence in the record establishing how an artisan
possessing an ordinary level of skill in the art would have interpreted the
claimed "content identlfzer" and the "video program" at the time of
Appellants' invention. (Claim 1, emphasis added).
Given the absence of any definition for the claim terms "content
identlfzer" and "video program" in apparatus claim 1, or any definition in
the Specification, on this record, Appellants have not persuaded us the
Examiner's reading of the contested claim terms on the cited portions of
Lemmons (in combination with Rosenberg) is overly broad, unreasonable, or
inconsistent with the Specification. (See Ans. 12). 4
3 We note Lemmons' paragraph 70 also describes Figure 11: "In step 1101,
the current un-enhanced video signal is displayed. The process proceeds to
step 1102 where pattern recognition techniques may be applied to the
current un-enhanced video presentation." (Emphasis added).
4 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Therefore, we conclude the scope of Appellants' claimed "video
program" broadly but reasonably encompasses the video presentation
described in Lemmons (Fig. 1, i-fi-143, 70). Because Lemmons' pattern
recognition technique (i-f70) recognizes (i.e., "identifies") an object in at least
one or more frames of video, we find Lemmons identifies at least some
portion of the video program, and thus at least suggests identifying the video
program, within the meaning of the "content identifier" recited in claim 1. 5
Therefore, we find a preponderance of the evidence supports the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness for claim 1. Accordingly, we sustain the Examiner's
Rejection A of representative claim 1, and also the rejection of each grouped
claim also rejected under Rejection A.6
5 "[T]he question under 35 U.S.C. § 103 is not merely what the references
expressly teach but \vhat they \vould have suggested to one of ordinary skill
in the art at the time the invention was made." Merck & Co., Inc. v. Biocraft
Laboratories, Inc., 874 F. 2d 804, 807-808 (Fed. Cir. 1989).
6 Regarding the "video program" and "the additional information" presented
to the user by the presentation unit (as recited in claim 1), the MPEP guides:
"where the claim as a whole is directed [to] conveying a message or
meaning to a human reader independent of the intended computer system,
and/or the computer-readable medium merely serves as a support for
information or data, no functional relationship exists." MPEP § 2111.05
(III.) (9th Ed., Mar. 2014). Therefore, we broadly but reasonably construe
the recited "video program" and "additional information" as non-functional
descriptive material (NFDM) merely intended for human perception. (Claim
1 ). We also conclude the recited "video program" and the "additional
information" (NFDM) presented to the user for human perception does not
further limit the structure of the apparatus of claim 1. The PT AB has
provided guidance in decisions on the appropriate handling of claims that
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Rejection B of claims 2, 3, 6, 7, 12, 13, 16, and 17
Regarding the claims rejected under rejection B (App. Br. 5),
Appellants focus on Goldstein and "the additional information" limitation,
as introduced and referenced (as a matter of antecedent basis) within claim
1, and also recited, for example, in dependent apparatus claims 2 and 3:
The allegation is clear error that Goldstein, figures 6, 8, and 9
and col. 6, lines 1-25 teaches that the claimed additional
information is presented on a remote control. The claimed
additional information has an antecedent - it is related to a
playback position within a video program. In contrast, the relied-
upon subject matter from Goldstein pithily describes presenting
advertisements from a cable head end on a remote control
without ever tying those advertisements to a program being
watched, much less to a particular playback position in the
program. Instead, Goldstein's advertisements appear to [] bear no
relation to the program being watched but are downloaded at the
discretion of the cable provider.
(App. Br. 5).
differ from the prior art only based on "non-functional descriptive material."
See Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential)
("[T]he nature of the information being manipulated does not lend
patentability to an otherwise unpatentable computer-implemented product or
process."). In our analysis herein, we consider the extrinsic MPEP
descriptions(§ 2111.05) regarding NFDM (reflecting official current
US PTO policy and procedural guidance) as underlying subsidiary facts
which inform our claim construction for all claims before us on appeal. See
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir. 2015)
("we review the Board's ultimate claim constructions de novo and its
underlying factual determinations involving extrinsic evidence for
substantial evidence. See also Teva Pharms. USA, Inc. v. Sandoz, Inc., 135
S.Ct. 831, 841--42 (2015).
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Regarding representative dependent claim 3, the Examiner looks to
Goldstein for teaching or suggesting the further limitation of "a remote
control for the video display," as recited in claim 3, in combination with the
teachings and suggestions of Lemmons and Rosenburg. The Examiner found
Lemmons teaches the "additional information" recited in claim 1, from
which claim 3 depends. (See Ans. 3). We agree with the Examiner that
Appellants are attacking Goldstein in isolation: 7
In this case, it is the combination of Lemmons, Rosenburg, and
Goldstein [that] disclose[ s] the entire claim limitation of
"wherein the additional information is presented to the user on a
remote control for the video display[.]" [F]irst of all, Lemmons
disclose[ s] the additional information relating the playback
position within the video content [that] is the ad of the "Paul's
Pizzeria" as shown in Fig. 2 and Fig. 3A, however Lemmon is
silent on presenting the AD information on a remote control for
the video display, but Goldstein disclose[s] the concept of
presenting the AD information on a remote control which allows
a user to place an order (Fig. 6-7 A, Fig. 8-9, col. 6, lines 1-25),
as such, the modification of Lemmons includ[ing] Goldstein's
remote control feature would arrive at a conclusion of Lemmons
system that has a remote control which displays and presents
"the AD of Paul's Pizzeria" to allow a user to place an order. As
such, the above mentioned claim limitation is met by the
combination of Lemmons, Rosenburg, and Goldstein.
(Ans. 13, emphasis added).
Because Appellants have not addressed the Examiner's specific
findings which rely on the combined teachings and suggestions of Lemmons,
Rosenberg, and Goldstein (Ans. 5-7), on this record, we are not persuaded
7 In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). One cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. Id.
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the Examiner erred. Therefore, we sustain the Examiner's Rejection B of
representative claim 3, and also the rejection of each grouped claim also
rejected under Rejection B.
Rejection C of claims 8 and 18
We sustain rejection C of dependent claims 8 and 18, which are not
separately argued. Arguments not made are considered waived. See 37
C.F.R. § 41.37(c)(l)(iv).
Conclusion
For the reasons discussed above, and by a preponderance of the
evidence, we are not persuaded the Examiner's claim interpretation
regarding the contested L 1 "content identifier" limitation is overly broad or
unreasonable. For the reasons discussed above, and on this record, we
sustain rejections A---C of all claims on appeal.
DECISION
We affirm the Examiner's rejections of claims 1-8, 10-18, 20, 31 and
32 under§ 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
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