Ex Parte LevyDownload PDFPatent Trial and Appeal BoardDec 21, 201613847917 (P.T.A.B. Dec. 21, 2016) Copy Citation 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. 13/847,917 03/20/2013 Kenneth L. Levy P1972-R 8319 23735 7590 12/23/2016 DIGIMARC CORPORATION 9405 SW GEMINI DRIVE BEAVERTON, OR 97008 EXAMINER LANGHNOJA, KUNAL N ART UNIT PAPER NUMBER 2427 NOTIFICATION DATE DELIVERY MODE 12/23/2016 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): dl-patentnotice @ digimarc .com lisa.parkinson@digimarc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENNETH L. LEVY Appeal 2016-000834 Application 13/847,917 Technology Center 2400 Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and JAMES R. HUGHES, 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 Rejection of claims 1, 2, and 5—7. Claims 3 and 4 are cancelled. Claims 8—14 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.1 1 Throughout this opinion, we refer to (1) the Final Rejection mailed Jan. 15, 2015 (“Final Act.”); (2) the Appeal Brief filed June 15, 2015 (“App. Br.”); (3) the Examiner’s Answer mailed Aug. 24, 2015 (“Ans.”); and (4) the Reply Brief filed Oct. 24, 2015 (“Reply Br.”). Appeal 2016-000834 Application 13/847,917 Invention The disclosed and claimed invention on appeal “relates to systems and methods for synchronizing broadcast content with network content and for facilitating electronic transactions on a network in response to broadcast content.” (Spec. 1). Representative Claim 1. A method of preparing associations between a content program and associated information, the method comprising: automatically recognizing content within the content program; [LI] associating auxiliary content with the recognized content, and associating the auxiliary content with an identifier embedded in a digital watermark in the content program or corresponding to one or more robust fingerprints derivable from the content program at a location within the content program at or in advance of a location of the recognized content; [L2] staging the auxiliary content for delivery to a user's mobile device during the content program, including making the auxiliary content accessible via a network connection; and in response to receiving the identifier obtained from processing of the digital watermark or one or more fingerprints from the content program, providing the auxiliary content to the user's mobile device. (Contested limitations LI and L2 are emphasized). Prior Related Appeal This appeal is related to Appeal No. 2010-002131 (Application No. 10/804,581), decided May 29, 2012, that involved a different set of claims, and §103 rejections over different references than the references relied on by the Examiner in the instant appeal. 2 Appeal 2016-000834 Application 13/847,917 Rejection Claims 1, 2, and 5—7 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Barsness (US 2005/0018216 Al, Jan. 27, 2005) and Rhoads (US 6,411,725 Bl, June 25, 2002). Grouping of Claims Based on Appellant’s arguments in the principal Brief, we decide the appeal of claims 1 and 5—7 on the basis of representative independent claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). We address dependent claim 2 separately, infra. To the extent Appellant has not advanced separate, substantive arguments for particular claims and/or limitations, or other issues, such arguments are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv). ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. We disagree with Appellant’s arguments, and we adopt as our own: (1) the findings and legal conclusions set forth by the Examiner in the action from which this appeal is taken, and (2) the findings, legal conclusions, and explanations set forth in the Answer in response to Appellant’s arguments. (Ans. 2—9). However, we highlight and address specific findings and arguments for emphasis in our analysis below. 3 Appeal 2016-000834 Application 13/847,917 Rejection of Independent Claim 1 under 35 U.S.C. § 103(a) Appellant contests limitations LI and L2 of claim 1: Barsness uses text, object, or metadata recognition that determines when known text, objects or metadata reside in an image, but it does not associate the auxiliary content with an identifier at a location in the content program as recited in claim 1 nor stage the auxiliary content for delivery as claimed. Rhoads does not redress this deficiency, and as such, the combination does not teach all of the elements of claim 1. In sum, the combination does not teach: [LI] "associating the auxiliary content with an identifier embedded in a digital watermark in the content program or corresponding to one or more robust fingerprints derivable from the content program at a location within the content program at or in advance of a location of the recognized content;" and [L2] "staging the auxiliary content for delivery to a user's mobile device during the content program, including making the auxiliary content accessible via a network connection," as recited in claim 1 in combination with other elements. (App. Br. 5). In support, Appellant further urges: Barsness provides some teaching on automatic recognition applied to an image, but provides no relevant teaching about location of the recognized content within a content program that would suggest the method of associating an identifier at a location within the content program at or in advance of a location of the recognized content as recited in claim 1. Barsness' recognition is applied to an image, not a content program, and there is no teaching or suggestion that location of a recognized content is used to associate auxiliary content with an identifier at a location within a content program. (App. Br. 6) (Emphasis added). 4 Appeal 2016-000834 Application 13/847,917 Claim Construction We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). Cf. Spec. 14,11. 15-16 (“The particular combinations of elements and features in the above-detailed embodiments are exemplary only;”). 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). As an initial matter of claim construction, Appellant urges, inter alia, “Bareness’ recognition is applied to an image, not a content program. . . .” (Appeal Br. 6) (Emphasis added). However, we find no definition in the claim or in the Specification of “content program” that would preclude the Examiner’s broader reading on the digital content taught by Bareness (e.g., 126, digital image 112; Final Act. 4). Nor does Appellant argue a particular definition in the Briefs.2 We note the literal term “content program” only appears in Appellant’s claims (including the originally-filed claims). We find the description portion of the Specification, and the drawings, are silent regarding any literal mention of “content program.” Turning to Appellant’s Specification for context, we merely find exemplary, non-limiting descriptions of content, for example: The broadcast production system manages the creation of the broadcast content, the embedding of identifiers into the content, and the broadcast of the content. This system is sufficiently 2 Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(l)(iv). 5 Appeal 2016-000834 Application 13/847,917 general to encompass a variety of forms of broadcasting and media content types, including TV (cable, satellite, over the air), and radio (satellite or over the air), as well as various formats of video and audio programming transmitted over these broadcast channels. (Spec. 7,11. 1—7) (Emphasis added). Because Appellant’s Specification (id.) broadly describes content in the general context of “a variety of forms of broadcasting and media content types,” on this record, we are not persuaded the Examiner’s reading of “content program” on the digital image content in Barsness (or the video content of Rhoads) is overly broad, unreasonable, or inconsistent with Appellant’s Specification. (See Final Act. 4—5). See ICON Health, 496 F.3d at 1379. Further regarding contested limitation FI, when a claim covers several alternatives, the claim may be unpatentable if any of the alternatives within the scope of the claim are taught by the prior art. See Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). Following this guidance, we agree with the Examiner’s broader interpretation, given the use of the alternative (“or”) language recited in claim 1: [The] Claim limitation "associating the auxiliary content with an identifier embedded in a digital watermark in the content program or corresponding to one or more robust fingerprints derivable from the content program at a location within the content program at or in advance of a location of the recognized content" does not require associating the auxiliary content with an identifier at a location in the content program. (Ans. 3). 6 Appeal 2016-000834 Application 13/847,917 Thus, regarding contested limitation LI, the Examiner need only show a teaching or suggestion3 of: “associating auxiliary content with the recognized content, and associating the auxiliary content with an identifier embedded in a digital watermark in the content program . . . (Claim 1). See Brown, 265 F.3dat 1351. As found by the Examiner (Final Act. 4), Barsness teaches, “automatically recognizing content within the content program” (i.e., recognizing a dog in a digital image 129) and “associating auxiliary content” (i.e., advertisements targeted to dog owners) with the recognized content (id.)'. Barsness at Fig. 4 and ^fl[ [0025-27], [0035-38] ("digital image 112 may contain an image of a dog ... [advertising generator 118 compares the object of the dog against the collection of objects contained within library 114 ... [i]f a match is found (i.e., it is determined that a dog object exists within digital image 112), a function 116 is run which generates an ad specifically tailored to dog owners"). (Final Act. 4). The Examiner finds Barsness teaches the well-known use of watermarks (129), as does Rhoads (Abstract) (Ans. 3^4; Final Act. 4). Therefore, we find “associating the auxiliary content [(e.g., advertisements in Barsness)] with an identifier embedded in a digital watermark in the content program” (claim 1) would have yielded predictable results, and thus would have been obvious to an artisan possessing an ordinary level of skill at the time of the invention. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 3 “[T]he question under 35 U.S.C. § 103 is not merely what the references expressly teach but what they would 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, 807-08 (Fed. Cir. 1989). 7 Appeal 2016-000834 Application 13/847,917 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).4 The Examiner turns to the secondary Rhoads reference, in combination with Barsness, for teaching or suggesting contested limitation L2: staging the auxiliary content [(i.e., advertisements)] for delivery to a user's mobile device during the content program, including making the auxiliary content accessible via a network connection’, (Claim 1) (Final. Act. 4—5). We agree with the Examiner that Rhoads (Fig. 1 A, col. 7—8, 12—14, 17) “teaches that the system can deliver the identified auxiliary content to the user's mobile device instead of to their television or set top box.” (Final Act. 5). We find a preponderance of the evidence supports the Examiner’s underlying factual findings and legal conclusion of obviousness: It would have been obvious to one of ordinary skill in the art at the time of the invention to combine the content recognition taught by Barsness with Rhoads ability to deliver content to the user's mobile device. This would have been desirable as it would have expanded the capabilities of Barsness's system to deliver supplemental content without disrupting the viewer's watching [] of the program. One of ordinary skill in the art at the time of the invention would have recognized this as a combination of known elements in the art that would have yielded predictable results. (Final. Act. 5) (Emphasis added). As further pointed out by the Examiner (Ans. 6), “Rhoads et. al. teaches providing consumers with their own personal and portable Internet personal device (PD), as shown in FIG. 9.” Because Appellant has not 4 “Associated with” merely requires commonality, not physical connection. See Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1306 (Fed. Cir. 2014). 8 Appeal 2016-000834 Application 13/847,917 persuaded us the Examiner erred, we sustain the rejection of representative claim 1, and the rejection of grouped claims 5—7. See Grouping of Claims, supra. Rejection of Dependent Claim 2 Regarding the rejection of claim 2, Appellant contends: The final rejection contends that the elements of claim 2 are inherent in the combination and provides no citations to any teaching in Barsness or Rhoads that allegedly teach these claim element. In fact, these elements are not taught in either reference. It is legally improper to apply inherency rationale for an obviousness rejection. Inherency and obviousness are distinct concepts. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F. 2d 1540, 1555 (Fed. Cir. 1983). (App. Br. 6). However, Appellant’s contention is not in accord with current Federal Circuit case law. Contrary to Appellant’s argument (id. ), our reviewing court has long “recognized that inherency may supply a missing claim limitation in an obviousness analysis.” PAR Pharmaceutical, Inc. v TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1194—95 (Fed. Cir. 2014). On this record, Appellant has not shown the evidence cited by the Examiner (Ans. 5—6) does not show “the natural result flowing from the operation as taught would result in the performance of the questioned function,” which is the current test in considering inherency under § 103. PAR Pharm., 773 F.3d at 1194—95. On this record, Appellant has not persuaded us the Examiner erred. See also our further comments infra regarding the rejection of claim 2. 9 Appeal 2016-000834 Application 13/847,917 Reply Brief To the extent Appellant advances new arguments in the Reply Brief not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner’s Answer will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2). Regarding Appellant’s allegation the Examiner’s response in the Answer (regarding claim 2) contains a new ground of rejection (Reply Br. 4), we note pursuant to 37 C.F.R. § 41.40 (tolling of time period to file a Reply Brief), Appellant has not filed a petition to the Director under 37 C.F.R. § 1.181 within two months from the entry of the Examiner’s Answer and before the filing of any Reply Brief. Failure of Appellant to timely file such a petition constitutes a waiver of any arguments that a rejection must be designated as a new ground of rejection. 37 C.F.R. § 41.40. To the extent the Examiner provided new citations in the Answer (7— 9) to Rhoads (Figures IB, 8, 9; col. 6,11. 8—35, col.15,11. 60-67, col.16,11. 15—18, and col. 17,11. 20-29), we find Rhoads, in combination with Barsness, at least suggests, “determining timing information based on a pattern of appearance of digital watermarks in the content program to enable synchronization to a location within the content program,” within the meaning of dependent claim 2. For example, Rhoads describes (col. 6,11. 8— 20): [T]he watermark may contain several identifiers and corresponding locations defining the screen location of a related video object. The screen location selected by the user determines which identifier is sent to the server for linked information or actions. In other words, a process at the end- user side maps the location of the user selection to an identifier 10 Appeal 2016-000834 Application 13/847,917 based on the locations encoded along with the identifiers in the content. For example, a segment of the audio track that is intended to be played with a corresponding video frame or frame sequence may include a watermark or watermarks that carry one or more pairs of identifier and locations. These watermarks may be repeated in audio segments synchronized with video frames that include corresponding linked video objects. (Emphasis added). Rhoads further teaches the use of timing information at column 6, lines 31—33 (“the frame number, screen coordinates of a user selection, time or date may be used in conjunction with information extracted from the watermark . . . .”). For at least these reasons, Appellant has not persuaded us the Examiner erred regarding the rejection of dependent claim 2. Conclusion For at least the aforementioned reasons, we find a preponderance of the evidence supports the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness regarding all contested issues on appeal. DECISION We affirm the Examiner’s rejection of claims 1, 2, and 5—7 under 35 U.S.C. § 103(a). No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f). AFFIRMED 11 Copy with citationCopy as parenthetical citation