Ex Parte Jacobs

Patent Trial and Appeal Board

May 31, 2017

11852969 (P.T.A.B. May. 31, 2017)

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.
11/852,969 09/10/2007 Mitch C. Jacobs PD-207094 2228
141451 7590 05/31/2017
AT&T Legal Dept. - [HDP]
Attention: Patent Docketing, Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
RABOVIANSKI, JIVKA A
ART UNIT PAPER NUMBER
2426
MAIL DATE DELIVERY MODE
05/31/2017 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 MITCH C. JACOBS
Appeal 2016-002352
Application 11/852,969
Technology Center 2400
Before MAHSHID D. SAADAT, LINZY T. McCARTNEY, and
KAMRAN JIVANI, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1—12 and 21—25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-002352
Application 11/852,969
STATEMENT OF THE CASE
The present patent application concerns “a method and apparatus for
tracking content played[,] including inserted material in a broadcast
television signal[,] even in the event of an encoder failure.” Specification
11. Claim 1 illustrates the claimed subject matter:
1. A method comprising:
generating a content signal;
generating a run log at a broadcast system in response to
the content signal;
monitoring a broadcast encoder and generating an encoder
message signal within the broadcast system in response to
monitoring; and
in response to the encoder message signal, updating the
run log in the broadcast system.
REJECTIONS
Claims 1, 5, 7—12, and 21 stand provisionally rejected on the ground
of nonstatutory double patenting over claims 1, 3, 5, 8, 11, and 12 of co­
pending Application No. 11/852,956.1
Claims 1 and 21 stand rejected under 35 U.S.C. § 112 12 as being
incomplete for omitting essential elements.
Claims 10, 11, and 24 stand rejected under 35 U.S.C. § 112 12 as
being indefinite.
Claims 1—12 and 21—25 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Feuer et al. (US 2003/0004793 Al; Jan. 2, 2003).
1 Appellant has not contested this rejection. See App. Br. 5. We therefore
summarily affirm it.
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Appeal 2016-002352
Application 11/852,969
Claims 1, 3, 4, 9—12, and 21—23 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Whymark (US 2006/0195863 Al; Aug. 31, 2006).
Claims 2, 5—8, 24 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Whymark and Feuer.
Claims 1^4 and 21—23 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Barone Jr. et al. (US 2004/0216161 Al; Oct. 28, 2004).
Claims 5—12, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Barone and Feuer.
ANALYSIS
Section 112 Rejections
Claims 1 and 21
The Examiner found claims 1 and 21 lack essential elements because,
in the Examiner’s view, these claims correspond to Appellant’s Figure 12
but do not include all of the steps shown in that figure. See Final Rejection
9, mailed Nov. 11, 2014 (“Final Act.”); Answer 34—35, mailed Oct. 19, 2015
(“Ans.”). Appellant contends the Examiner has not identified an “essential”
element, and in any event, there is no requirement that every step shown in
the figures must be included in the claims. See Appeal Brief 8, filed April 9,
2015 (“App. Br.”); Reply Brief 4, Dec. 21, 2015 (“Reply Br.”).
We agree with Appellant. The Examiner has not adequately
explained why the allegedly missing steps are “essential” to the claimed
invention. See, e.g., Final Act. 24; Ans. 34—35. Accordingly, we do not
sustain this rejection.
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Appeal 2016-002352
Application 11/852,969
Claims 10 and 11
Claims 10 and 11 respectively recite “an actual start time” and “a
scheduled start time, an actual start time.” App. Br. 22. The Examiner
concluded these terms render claims 10 and 11 indefinite because
Appellant’s written description establishes that “an actual start time” and “a
scheduled start time” may be the same. See Final Act. 8—9; Ans. 33—34.
Appellant argues that one of ordinary skill in the art would understand that
“[an] actual start time is the actual time something actually begins. On the
other hand, the scheduled start time is the time something is scheduled to
begin.” App. Br. 6.
We agree with Appellant. The plain language of the terms “actual
start time” and “scheduled start time” make clear that an “actual start time”
is the time something really begins, whereas a “scheduled start time” is the
time something is supposed to begin. The fact that these times may be the
same in some cases does not render these claims indefinite. We therefore do
not sustain this rejection.
Claim 24
Claim 24 recites “wherein the automation system comprises a first
automation system that generates a first run log and a second automation
system that generates a second run log, said automation system forms a
consolidated run log using the first run log and the second run log.” App.
Br. 23—24. The Examiner found claim 24 “vague and indefinite” because “it
is not clear whether the consolidated run log is formed by the 1 st or 2nd
automation system.” Final Act. 9. Appellant argues one of ordinary skill in
the art would understand the automation system as a whole forms the
consolidated run log. App. Br. 7.
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Appeal 2016-002352
Application 11/852,969
We agree with Appellant. Claim 24 recites “the automation system
forms a consolidated run log using the first run log and the second run log.”
App. Br. 24. From this, one of skill in the art would understand the
automation system forms the consolidated run log. The claim need not
specify every component or step the automation system uses to create the
consolidated run log for the claim to be sufficiently definite. Because the
Examiner has not provided sufficient evidence or reasoning to support this
rejection, we do not sustain it.
Prior Art Rejections
We have reviewed the Examiner’s rejections of the pending claims in
light of Appellant’s arguments, and we disagree with Appellant that the
Examiner erred. To the extent consistent with our analysis below, we adopt
the Examiner’s reasoning, findings, and conclusions in the appealed action
and the Answer.
Appellant argues Whymark does not disclose claim 1 ’s “generating a
run log,” “monitoring,” and “in response to” steps. See App. Br. 13—15.
Specifically, Appellant contends claim 1 requires performing these steps
either “at,” “within,” or “in” a “broadcast system.” See id. Appellant argues
“Whymark describes activities performed outside of the recited “broadcast
system” because Whymark “teaches electronic [detection] devices located in
markets receive that broadcasts.” Id. at 14 (first emphasis added, second
emphasis modified).
We find Appellant’s arguments unpersuasive. Appellant does not
argue Whymark fails to disclose performing the functions recited in the
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Appeal 2016-002352
Application 11/852,969
disputed steps;2 Appellant merely argues Whymark does not disclose
performing these functions in a “broadcast system.” But Appellant has not
pointed to anything in the claims or the written description that precludes a
“broadcast system” from including components in a market that receives a
broadcast. Nor has Appellant provided extrinsic evidence that suggests we
should limit “broadcast system” in this manner. In light of Appellant’s
failure to present any persuasive evidence or reasoning in support of this
argument, we see no reason to disturb the Examiner’s finding that
Whymark’s detection devices are part of “broadcast system” under the
broadest reasonable interpretation of this term. See Final Act. 14—15; Ans.
37-39.
Accordingly, we sustain the Examiner’s rejection of claim 1 as
anticipated by Whymark. Appellant has not presented separate, persuasive
arguments concerning the Examiner’s rejections of claims 2—12 and 21—25
as either anticipated by Whymark or obvious in view of Whymark and
Feuer, see App. Br. 15—16, so we also sustain the Examiner’s rejections of
these claims. Because we have sustained an art-based rejection for each of
the pending claims, we do not address Appellant’s arguments concerning the
Examiner’s rejections based on other prior art references.
DECISION
We reverse the Examiner’s rejections of claims 1, 10, 11,21, and 24
under 35 U.S.C. § 112.
2 Appellant has waived not only this argument but also any other argument
that Appellant failed to timely raise or adequately present. See 37 C.F.R. §§
41.37(c)(l)(iv), 41.41(b)(2).
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Appeal 2016-002352
Application 11/852,969
We summarily affirm the Examiner’s provisional double patenting
rejection of claims 1, 5, 7—12, and 21. We affirm the Examiner’s rejection
of claims 1,3,4, 9—12, and 21—23 as anticipated by Whymark. We also
affirm the Examiner’s rejection of claims 2, 5—8, 24, and 25 as obvious in
light of Whymark and Feuer.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1). No time period for taking any subsequent action in
connection with this appeal may be extended under 37 C.F.R. §
1.136(a)(l)(iv).
AFFIRMED
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