Ex Parte Howe et al

Patent Trial and Appeal Board

Nov 28, 2012

10335735 (P.T.A.B. Nov. 28, 2012)

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.
10/335,735 01/02/2003 Wayne R. Howe ATT94021DIV5 9036
84326 7590 11/29/2012
AT & T LEGAL DEPARTMENT - Toler
ATTN: PATENT DOCKETING
ROOM 2A-207
ONE AT & T WAY
BEDMINSTER, NJ 07921
EXAMINER
NGUYEN BA, HOANG VU A
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
11/29/2012 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 WAYNE R. HOWE, FRED THOMAS DANNER III, and
JOHN R. MAUNEY
____________________

Appeal 2010-005063
Application 10/335,7351
Technology Center 2400
____________________

Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed January 2, 2003, claiming benefit of U.S. Application No.
08/428,718, filed April 25, 1995. The real party in interest is AT&T
Intellectual Property L.P. (Br. 2.)
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Application 10/335,735

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STATEMENT OF THE CASE
Appellants appeal from the Examiner’s rejection of claims 69 and
144-172. Claims 1-68 and 70-143 have been canceled. (Br. 2, 15.) We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
The invention at issue on appeal concerns methods for providing
interactive television content and transitioning from analog based television
programs to an interactive application (television) program. (Spec. 1:2-4;
7:5-8:23; Abstract.)2
Representative Claim
Independent claim 11, reproduced below, with disputed limitations
italicized, further illustrates the invention:
11. A method for providing interactive content over a
service provider network, comprising:
receiving television content over the service provider
network;
concurrent with receiving the television content,
receiving an indicator over the service provider network;
wherein the indicator is indicative of an availability of
interactive content related in subject matter to the television
content and wherein the indicator causes instructions to present
for display an on-screen image overlaid on the television
content;
presenting for display the television content;

2 We refer to Appellants’ Specification (“Spec.”) and Appeal Brief (“Br.”)
filed April 27, 2009. We also refer to the Examiner’s Answer (“Ans.”)
mailed July 31, 2009.
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in response to the indicator, presenting for display the on-
screen image indicating availability of the interactive content;
receiving a communication indicating acceptance of the
interactive content;
receiving the interactive content; and
presenting for display the interactive content.

Rejection on Appeal
The Examiner rejects claims 69 and 144-172 under 35 U.S.C. § 102(e)
as being anticipated by U.S. Patent No. 5,539,822, issued Jul. 23, 1996 (filed
Apr. 19, 1994) (“Lett”).

ISSUE
Based on our review of the administrative record, Appellants’
contentions, and the Examiner’s findings and conclusions, the pivotal issue
before us follows:
Does the Examiner err in finding that Lett discloses “concurrent with
receiving the television content, receiving an indicator over the service
provider network; wherein the indicator is indicative of an availability of
interactive content . . . wherein the indicator causes instructions to present
for display an on-screen image overlaid on the television content;”
“receiving a communication indicating acceptance of the interactive
content;” and “receiving the interactive content” within the meaning of
Appellants’ claim 69 and commensurate limitations of claims 150, 159, and
167?

Appeal 2010-005063
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FINDINGS OF FACT
We adopt the Examiner’s findings in the Answer and the Final Office
Action as our own.

ANALYSIS
Based on Appellants’ arguments (Br. 6-13), we select independent
claim 69 as representative of Appellants’ arguments and groupings with
respect to claims 69 and 144-172. 37 C.F.R. § 41.37(c)(1)(vii).
Appellants contend that Lett “operates in a different fashion from
claim 69. Lett's system jumps right in to deliver the interactive content,
without presenting an on-screen-image indicating its availability, and
without waiting for it to be accepted.” (Br. 7.) Appellants further contend
that “Lett has no interactive content” (Br. 8) and “does not disclose an
on-screen-image indicative of the availability of additional content
related in subject matter to the television content” (Br. 9). (See Br. 6-9.)
The Examiner sets forth a detailed explanation of the anticipation
rejection in the Examiner’s Answer with respect to each of the claims (Ans.
3-15) and, in particular, the rejection of claim 69. (Ans. 3-4, 6-9.)
Specifically, the Examiner provides a detailed explanation with respect to
Lett and in particular Lett’s disclosure of: (1) “receiving an indicator” – i.e.,
a “transaction message including first template screen” (Ans. 3; see id. at 6-
7); (2) “the indicator is indicative of an availability of interactive content
related in subject matter to the television content and wherein the indicator
causes instructions to present for display an on-screen image overlaid on the
television content” – e.g., “a relevant poll is overlaid on a live town hall
meeting television broadcast” (Ans. 3; see id. at 6-8 (citing Lett, col. 15, 1.
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45-62; col. 17, 1. 12-28, 50-64; col. 18, 1. 21-25, 44-50; col. 19, 1. 1-6, 24-
29, 46-51; Figs. 3A-3L)); (3) “receiving a communication indicating
acceptance of the interactive content” – i.e., “the user may select a response
or allow a timeout period to expire” (Ans. 4; see id. at 6-8 (citing Lett, col.
16, 1. 42-48; col. 17, 1. 29-37, 65-67; col. 18, 1-5, 26-30, 51-53; col. 19, 1.
7-9, 30-32, 52-54; Figs. 3A-3L)); and (4) “receiving the interactive content
and presenting for [it for] display” – e.g., the “second template screen and all
additional template screens transmitted in response to user selection” (id.
(citing Lett, col. 17, 1. 33-49; col. 18, 1. 6-20, 31-43, 54-67; col. 19, 1. 10-
23, 38-45, 60-67; Figs. 3A-3L)). We adopt these findings and this reasoning
as our own.
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s findings that Lett discloses the disputed
features of claim 69. Accordingly, we sustain the Examiner’s rejection of
claim 69 for the reasons set forth in the Answer, which we incorporate
herein by reference. (Ans. 3-15.) We limit our additional analysis to the
following points of emphasis.
We initially note that all of the argued limitations with respect to
claim 69 fail to distinguish the claimed invention from the prior art either
structurally or functionally. The recited “indicator” (which “is indicative of
an availability of interactive content”), “on-screen image overlaid on the
television content,” and “interactive content” are all essentially non-
functional descriptive material in that the limitations simply require receipt
and display of data. The data received or displayed on a screen constitutes
non-functional descriptive material in that the underlying structure and
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functionality remain the same regardless of what the data constitutes, how
the data may be named, or the relationship among the data and do not further
limit the claimed invention either functionally or structurally. The
informational content of the data thus represents non-functional descriptive
material, which “does not lend patentability to an otherwise unpatentable
computer-implemented product or process.” Ex parte Nehls, 88 USPQ2d
1883, 1889 (BPAI 2008) (precedential). See Ex parte Curry, 84 USPQ2d
1272, 1274 (BPAI 2005) (informative) (Fed. Cir. Appeal No. 2006-1003),
aff’d, (Rule 36) (June 12, 2006) (“wellness-related” data in databases and
communicated on distributed network did not functionally change either the
data storage system or the communication system used in the claimed
method). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls,
88 USPQ2d at 1887-90 (discussing non-functional descriptive material).
Even if we arguendo ascribe some patentable weight to the
limitations, as explained by the Examiner, Lett discloses receiving an
indicator, displaying an indication (of interactive content), communicating
acceptance of interactive content, and receiving interactive content. (Ans. 3-
4, 6-9.) We agree with the Examiner that displaying poll results is
“interactive content” because the results describe user/voter interaction
(voting on the displayed content) including a particular users interaction.
Accordingly, we agree with the Examiner’s findings that Lett discloses:
receiving an indicator over the service provider network;
wherein the indicator is indicative of an availability of
interactive content related in subject matter to the television
content and wherein the indicator causes instructions to present
for display an on-screen image overlaid on the television
content;
. . .
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in response to the indicator, presenting for display the on-
screen image indicating availability of the interactive content;
receiving a communication indicating acceptance of the
interactive content; [and]
receiving the interactive content
(Claim 69.)
Further, Appellants failed to file a Reply Brief rebutting the findings
and responsive arguments made by the Examiner in the Answer.
Thus, Appellants do not persuade us of error in the Examiner’s
anticipation rejection of representative independent claim 69 and we affirm
the Examiner’s anticipation rejection of claim 69.
The § 102 Rejections of Claims 144-172
Although Appellants present arguments with respect to independent
claims 150, 159, and 167, these arguments are essentially the same as the
arguments made with respect to claim 69 discussed supra. (See Br. 9-15;
compare id. at 6-9.) Appellants do not address or separately argue
dependent claims 144-149, 151-158, 160-166, and 168-172. (Br. 8, 10, 12,
13.) Accordingly, we affirm the Examiner’s rejection of these claims for the
reasons discuss with respect to claim 69 (supra).

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
69 and 144-172 under 35 U.S.C. § 102(3).

DECISION
We affirm the Examiner’s rejections of claims 69 and 144-172.
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Application 10/335,735

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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

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