Ex Parte Hokimoto

Patent Trial and Appeal BoardAug 26, 2013

11465002 (P.T.A.B. Aug. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte AKIHIRO HOKIMOTO ____________________ Appeal 2011-004772 Application 11/465,002 Technology Center 2100 ____________________ Before DEBRA K. STEPHENS, ERIC B. CHEN, and HUNG H. BUI, Administrative Patent Judges. Per curiam. DECISION ON APPEAL Appeal 2011-004772 Application 11/465,002 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing was held August 20, 2013. We REVERSE. Introduction According to Appellant, the invention relates to a metadata generating apparatus for generating metadata associated with content data continuously generated in real time includes an additional information acquiring unit that acquires additional information corresponding to at least one piece of the content data and a link information adding unit that adds link information uniquely identifying the at least one piece of the content data corresponding to the additional information to the corresponding additional information to generate the metadata (Abstract). Exemplary Claim Claim 1, reproduced below, is illustrative of the claimed subject matter: (1) A computer-implemented metadata generating apparatus generating metadata associated with content data continuously generated in real time, the metadata generating apparatus comprising: Appeal 2011-004772 Application 11/465,002 3 an additional information acquiring unit includes a processor that acquires additional information corresponding to at least one piece of the content data, said content data being continuously generated in real-time, and said additional information acquiring unit stores the additional information in a computer readable medium; and a link information adding unit that adds link information uniquely identifying the at least one piece of the content data from other content data that is continuously generated in real-time and corresponding to the additional information to the corresponding additional information to generate the metadata. REFERENCES von Kaenel Anderson Onoda US 2004/0117358 A1 US 2005/0144225 A1 US 2008/0195573 A1 Jun. 17, 2004 Jun. 30, 2005 Aug. 14, 2008 REJECTIONS 1 The Examiner made the following rejections: (1) Claims 1, 2, 4, 5, 7, and 11-16 stand rejected under 35 U.S.C §102(b) as being anticipated by von Kaenel (Ans. 5-8). (2) Claims 3, 6, and 8-10 stand rejected under 35 U.S.C §103(a) as being unpatentable over von Kaenel and Anderson (Ans. 9-10). (3) Claims 1 and 11-16 stand rejected under 35 U.S.C §103(a) as being unpatentable over von Kaenel and Onodo (Ans. 11-14). 1 We note Appellants’ stated grounds of rejection as presented in Appeal Brief are not consistent with the Examiner’s rejections as outlined in both the Final Office Action mailed January 26, 2010 and the Examiner’s Answer mailed October 5, 2010. As such, for purposes for this Appeal, we will consider the Examiner’s rejections as correctly outlined in the Examiner’s Answer. Appeal 2011-004772 Application 11/465,002 4 ISSUE 1 Claims 1-16 Appellant argues the invention as recited in claim 1 and 11-16 is not anticipated by von Kaenel because von Kaenel does not disclose “a link information adding unit that adds link information uniquely identifying the at least one piece of the content data from other content data that is continuously generated in real-time and corresponding to the additional information to the corresponding additional information to generate the metadata” as recited in claim 1 and commensurately recited in claim 11 (App. Br. 8-10). Specifically, Appellant argues although von Kaenel appears to describe linking spatial information to tabular data, von Kaenel does not disclose adding linking information as recited (App. Br. 9). Further, Appellant contends the spatial information in von Kaenel is not described to uniquely identify the at least one piece of content data nor is the spatial information added to the corresponding additional information to generate the metadata (App. Br. 9-10). Issue 1: Has the Examiner erred in finding von Kaenel discloses the invention as recited in independent claims 1 and 11-16? ANALYSIS It is not enough [in an anticipation rejection] that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed Appeal 2011-004772 Application 11/465,002 5 invention. Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). We conclude that the rejection of claims 1 and 11-16 lacks the requisite specificity needed for the establishment of a prima facie case of anticipation. The Examiner bears the initial burden of presenting a prima facie case of unpatentability (In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). A prima facie case is established when the party with the burden of proof points to evidence that is sufficient, if uncontroverted, to entitle it to prevail as a matter of law. See Saab Cars USA, Inc. v. United States, 434 F.3d 1359, 1369 (Fed. Cir. 2006). Here, that burden has not been met in a manner enabling proper review. Specifically, the Examiner has cited multiple paragraphs for various elements recited, but has not provided any explanation as to how these multiple, distinct teachings may be combined to describe the present invention (See Ans. 5 and 15-16). Accordingly, based on the record before us we cannot sustain the Examiner’s rejection of claims 1, 2, 4, 5, 7, and 11-16 under 35 U.S.C. § 102(b) for anticipation. Since claims 3, 6, and 8-10 depend from claim 1, we cannot sustain the rejection of these claims under 35 U.S.C. § 103(a) for obviousness over von Kaenel and Onodo. ISSUE 2 35 U.S.C. § 103(a): Claims 1and 11-16 Appellant asserts the invention as recited in claims 1 and 11-16 is not obvious over von Kaenel and Onodo because: (1) Onodo does not cure the Appeal 2011-004772 Application 11/465,002 6 deficiencies of von Kaenel, as argued in the response to the rejection of claim 1 for anticipation, and (2) the Examiner has not articulated why it would have been obvious to combine Onodo and von Kaenel to arrive at Appellant’s claims 1 and 11-16 (App. Br. 10-13). Specifically, Appellant contends that although Onodo describes licensing data being added directly to or multiplexed with content data, the licensing data is not added to acquired additional data (App. 12-13). Further, Appellant argues the Examiner’s assertion that combining von Kaenel and Onodo would allow the enhancement of tuning of the system is unclear, i.e., the Examiner does not specify what would be enhanced or tuned by combining the references (App. Br. 11). Issue 2: Has the Examiner erred in finding the combination of von Kaenel and Onodo teaches or suggests the invention as recited in claims 1 and 11-16? ANALYSIS We conclude that the rejection of claims 1 and 11-16 lacks the requisite specificity needed for the establishment of a prima facie case of obviousness. Again, the Examiner has cited a multitude of paragraphs of the references without setting forth with particularity how the cited disclosures describe the present invention as recited. Absent a convincing explanation from the Examiner in support of why the cited portions of Kaenel and Onodo are deemed to teach the disputed features, we are left to speculate how and why the references are being applied. Consequently, based on the record before us, we conclude that the combination of Kaenel and Onodo would not have taught or suggested each Appeal 2011-004772 Application 11/465,002 7 recited feature of Appellant’s claims 1 and 11-16 to one of ordinary skill in the art at the time of Appellant’s invention. We additionally find the Examiner has not sufficiently articulated reasoning as to why an ordinarily skilled artisan would have been motivated to combine the references. Specifically, we agree with Appellant that the stated motivation, “it would allow the enhancement of tuning the system,” is unclear as to what specifically would be enhanced or tuned. As a result, the rejection of claims 1 and 11-16 fails to establish a prima facie case of obviousness. Therefore, we cannot sustain the rejection of claims 1 and 11-16 under 35 U.S.C. § 103(a) for obviousness over von Kaenel and Onodo. DECISION The Examiner’s rejection of claims 1, 2, 4, 5, 7, and 11-16 under 35 U.S.C. § 102(b) as being anticipated by von Kaenel is reversed. The Examiner’s rejection of claims 1 and 11-16 under 35 U.S.C. § 103(a) as being unpatentable over von Kaenel and Onodo is reversed. The Examiner’s rejection of claims 3, 6, and 8-10 under 35 U.S.C. § 103(a) as being unpatentable over von Kaenel and Anderson is reversed. REVERSED ke