Ex Parte Abajian et al

Board of Patent Appeals and Interferences

Oct 14, 2009

10886946 (B.P.A.I. Oct. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ARAM CHRISTIAN ABAJIAN, ROBIN ANDREW
ALEXANDER, SCOTT CHAO-CHUEH LEE, AUSTIN DAVID DAHL,
JOHN ANTHONY DEROSA, CHARLES A. PORTER, ERIC CARL
REHM, JENNIFER LYNN KOLAR, and
SRINIVASAN SUDANAGUNTA
__________

Appeal 2009-004233
Application 10/886,946
Technology Center 2100
__________

Decided: October 15, 2009
__________

Before JAY P. LUCAS, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejections of claims 28-36 and 39-56. We have jurisdiction
under 35 U.S.C. § 6(b). A telephonic hearing was held on October 6, 2009.
We reverse.
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STATEMENT OF THE CASE
Invention
Appellants’ invention relates to computer related information search
and retrieval. More particularly, the invention on appeal is directed to
multimedia and streaming media search tools. (Spec. [0002]).

Independent claim 28 is illustrative:
28. A method for indexing media instances accessible on a
communications network using a trusted database, comprising:

identifying a plurality of media instances accessible on
the communications network; and

for each identified media instance:

extracting metadata related to the media instance
from sources other than the trusted database;

in the trusted database, identifying a metadata
record having contents stored before the media instance
is identified and that at least partially match the extracted
metadata;

enhancing the extracted metadata by adding at
least a portion of the contents of the metadata record to
the extracted metadata; and

augmenting with the enhanced metadata a media
instance search index that is distinct from the trusted
database.

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Prior Art
The Examiner relies upon the following references as evidence:
Eyal 6,389,467 B1 May 14, 2002
Day 6,959,326 B1 Oct. 25, 2005

Rejections
Claims 28-36 and 39-56 are rejected under 35 U.S.C. § 102(e) as
anticipated by Day.
Claims 28-36 and 39-56 are rejected under 35 U.S.C. § 102(e) as
anticipated by Eyal.
ISSUES
Appellants contend, inter alia, that neither Day nor Eyal discloses
enhancing the extracted metadata by adding at least a portion of the contents
of the metadata record to the extracted metadata wherein the metadata is
extracted from sources other than the trusted database. (Day: see App. Br. 7-
13; Eyal: see App. Br. 13-16).
Issue 1: Have Appellants shown the Examiner erred in finding that
Day discloses enhancing the extracted metadata by adding at least a portion
of the contents of the metadata record to the extracted metadata wherein the
metadata is extracted from sources other than the trusted database?
Issue 2: Have Appellants shown the Examiner erred in finding that
Eyal discloses enhancing the extracted metadata by adding at least a portion
of the contents of the metadata record to the extracted metadata wherein the
metadata is extracted from sources other than the trusted database?
We answer both questions in the affirmative, as discussed infra.
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PRINCIPLES OF LAW
“Whether an invention is anticipated is a question of fact.” Elan
Pharm., Inc. v. Mayo Found. for Med. Educ. and Research, 346 F.3d 1051,
1054 (Fed. Cir. 2003) (citing Hoover Group, Inc. v. Custom Metalcraft, Inc.,
66 F.3d 299, 302 (Fed. Cir. 1995)). In rejecting claims under 35 U.S.C. §
102, “[a] single prior art reference that discloses, either expressly or
inherently, each limitation of a claim invalidates that claim by anticipation.”
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005)
(citation omitted).
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (citation omitted). Therefore, we look to Appellants’ Briefs to show
error in the proffered prima facie case.

FINDINGS OF FACT - The Day Reference
In our analysis infra, we rely on the following findings of fact (FF):
1. Day discloses that “[t]he metadata warehouse 4 gathers
indexable metadata on URLs from different content site
owners 2. The metadata warehouse 4 may provide this
information to a search engine provider to use to update
its URL database. Alternatively, the metadata warehouse
4 may be part of the search engine provider that gathers
indexable metadata for the search engine database. The
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content provider 2 wants to make information on its web
site available to the metadata warehouse 4 in order to
allow Internet users to locate URLs at its site when doing
searches.” (Col. 3, ll. 52-61).
2. Day discloses that “[t]he browsable content of the
content provider 2 is maintained in a repository 8.” (Col.
3, ll. 62-63; Fig. 1).
3. Day discloses that “[t]he collection tool 6 includes robot
type functions known in the art for traversing web pages
and is designed to gather indexable metadata from
content at URLs in the repository 8.” (Col. 4, ll. 33-36;
Fig. 1).
4. Day discloses an embodiment where metadata
“warehouse 4 provides the content provider 2 the
collection tool 6” (col. 4, ll. 41-42) that “further includes
validation checkers 24a, b . . . n that are programs that
process the page at the URL to determine whether the
pages satisf[y] certain predetermined conditions . . . [such
as] conformance to certain standards and conditions.
(Col. 4, ll. 58-63).
5. Day discloses that the “validation checker output may be
added to the metadata for the Web page.” (Col. 4, ll. 63-
65).
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6. Day discloses that if a given URL does not satisfy the
qualifier predicate (i.e., validation checker qualifiers 66)
that is applied against the output of the validation checker
program, “then no metadata is returned for that URL and
the non qualifying URL would not be indexed for
inclusion with the metadata provided to warehouse 4.”
(Col. 6, ll. 49-56).

ANALYSIS - § 102 rejection over the Day reference
Issue 1
We decide the question of whether Appellants have shown the
Examiner erred in finding that Day discloses enhancing the extracted
metadata by adding at least a portion of the contents of the metadata record
to the extracted metadata wherein the metadata is extracted from sources
other than the trusted database. (See App. Br. 20-22, Claims 28, 39, and 48).
At the outset, we note that the Examiner broadly interprets the
aforementioned argued limitations as follows:
The argued claimed limitation "enhancing by adding portion of
the content of the metadata record" clearly suggest broad and
disparate interpretation without any further detail as to which
content nor which portion is selected and what occurs
subsequent to the "addition of this content" thus leaving it open
to fall under the broadest reasonable interpretation.
(Ans. 10, ¶2).

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We conclude that the Examiner’s overly broad interpretation is
unreasonable because it ignores specific positively-recited claim
limitations.1 We note that the disputed step of “enhancing” is expressly
defined by the claim language itself to require “adding at least a portion of
the contents of the metadata record to the extracted metadata.” (App. Br. 20,
Claim 28). We conclude that a broad but reasonable interpretation of the
claimed “enhancing” step involves more than merely adding two nondescript
metadata elements together.
Firstly, the extracted metadata must be extracted from “sources other
than the trusted database” that contains metadata records. (See App. Br. 20-
22, Claims 28, 39, and 48) (emphasis added).
Secondly, the express language of the claim requires that the
identified metadata record from the trusted database must have (1) “contents
stored before the media instance is identified,” and (2) that at least “partially
match the extracted metadata.” (Id.) (emphasis added).
Thus, we disagree with the Examiner’s contention that Appellants’
claim does not provide further detail as to which content nor which portion
is selected and what occurs subsequent to the addition of this content. (Ans.
10, ¶2). Contrary to the Examiner’s assertion, we find each of Appellants’
independent claims on appeal expressly recite a step of “augmenting” that
specifies what occurs subsequent to the addition of content (enhancing step).

1 Cf. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“In the
patentability context, claims are to be given their broadest reasonable
interpretations . . . .”) (citations omitted, emphasis added).

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In the principal Brief, Appellants admit that Day discloses that
“[m]etadata is extracted from sources other than the database, such as URLs,
and added to the database.” (App. Br. 8, ¶1). We agree with both the
Appellants and the Examiner on this point, given that Day discloses that
“collection tool 6 includes robot type functions known in the art for
traversing web pages and is designed to gather [i.e., extract] indexable
metadata from content at URLs in the [web] repository 8.” (FF 3). Day
further discloses that web repository 8 is where the browsable content of the
content provider is maintained (FF 2; Fig. 1).
However, Appellants contend that Day does not disclose enhancing
the extracted metadata by adding at least a portion of the contents of a
metadata record from the trusted database, as required by the language of
the claim. (App. Br. 8, ¶1). Instead, Appellants contend that Day merely
adds this extracted metadata to the database. (Id.).
The Examiner appears to read the disputed enhancement step on
Day’s validation checker that enhances the extracted metadata by adding
information to the metadata. (Ans. 10, ¶2). We observe that Day expressly
discloses the “validation checker output may be added to the metadata for
the Web page.” (FF 5, emphasis added). Further, Day discloses an
embodiment where metadata warehouse 4 provides the content provider 2
the collection tool 6 that further includes validation checkers that are
programs that process the page at the URL to determine whether the pages
satisfy certain predetermined conditions. (FF 4).

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While Day’s validation checker programs do “enhance” or filter the
extracted metadata by determining whether the pages satisfy certain
predetermined conditions (e.g., “Adult Content,” Day col. 5, l. 52), we find
the enhancement disclosed by Day is not performed identically as claimed:
i.e., “enhancing the extracted metadata by adding at least a portion of the
contents of the [preexisting and at least partially matching] metadata record
[obtained from the trusted database] to the extracted metadata,” as required
by the commensurate language of each independent claim before us on
appeal. (App. Br. 20-22, Claims 28, 39, and 48).
Based upon our review of the evidence, we find that the Examiner has
not clearly established in the record exactly where Day discloses a portion of
a preexisting metadata record in a trusted database (i.e., that has contents
stored before the media instance is identified) is added to the extracted
metadata, where the preexisting metadata record in the trusted database also
at least partially matches the extracted metadata. Clearly, Day’s validation
checker programs cannot reasonably correspond to the claimed metadata
record. In the alternative, if the Examiner is reading the claimed metadata
record on Day’s associated validation checker qualifiers 66, we find that to
affirm the Examiner on this point would require speculation as to whether
the validation checker qualifiers are stored in a trusted database as a
preexisting metadata record. (See FF 6; see also “Validation Checker
Qualifiers 66” as shown in Fig. 3).
Instead, we find Day’s validation checker programs (and associated
validation checker qualifiers) merely filter the extracted metadata by
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determining whether the pages satisfy certain predetermined conditions (e.g.,
“Adult Content,” Day col. 5, l. 52), and, if so, then the filtered extracted
metadata is indexed for inclusion with the metadata provided to
warehouse 4. (FF 6). Therefore, we find the weight of the evidence
supports Appellants’ contention that Day merely adds extracted metadata to
the database. (App. Br. 8, ¶1).
The Examiner appears to be focusing on the “enhancing” element in
isolation and is ignoring the context of the claim as a whole. However,
claim terms are not to be interpreted in a vacuum, devoid of the context of
the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183
F.3d 1369, 1374 (Fed. Cir. 1999) (“proper claim construction ... demands
interpretation of the entire claim in context, not a single element in
isolation.”); ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir.
2003) (“While certain terms may be at the center of the claim construction
debate, the context of the surrounding words of the claim also must be
considered . . . .”). This discussion buttresses our earlier finding that the
Examiner’s overly broad interpretation of the claimed “enhancing” element
is unreasonable because it ignores specific positively-recited claim
limitations.
Therefore, we find the evidence before us supports Appellants’
position as argued in the Briefs. “[A]bsence from the reference of any
claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible,
Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986). Accordingly, we reverse the
Examiner’s rejection of independent claims 28, 39, and 48 as being
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anticipated by Day. Because we have reversed the Examiner’s § 102
rejection over Day for each independent claim on appeal, we also reverse the
Examiner’s § 102 rejection over Day for each dependent claim on appeal.

FINDINGS OF FACT - The Eyal Reference
In our analysis infra, we rely on the following findings of fact (FF):
1. Eyal discloses that “[e]ach media site may provide access to
media through one or more media links available at the site or
through other means. The media links identify web resources
having media content. These web resources may include a file
of arbitrary type. Examples of file types include Multipurpose
Internet Mail Extension (MIME) types such as MOV, JPEG, or
RAM.” (Col. 12, ll. 13-19).
2. Eyal discloses that “[i]n step 120, the system identifies and
stores in a database media links (URLs) for each media site.”
(Col. 12, ll. 28-29).
3. Eyal discloses that “[i]n step 140, metadata information is
extracted from each media link. Preferably, metadata
information is extracted from each verified media link. In an
embodiment, metadata may also be added to a list or database
of extracted metadata. Additional metadata may be added
using, for example, manual interactive editing and an editor
interface (see for example, editor interface module 275 in FIG.
2).” (Col. 12, ll. 37-43).
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4. Eyal discloses “[i]n step 670, extracted metadata is stored in a
database with the associated URL of the media link that was
verified.” (Col. 25, ll. 17-19).

ANALYSIS - § 102 rejection over the Eyal reference
Issue 2
We decide the question of whether Appellants have shown the
Examiner erred in finding that Eyal discloses enhancing the extracted
metadata by adding at least a portion of the contents of the metadata record
to the extracted metadata wherein the metadata is extracted from sources
other than the trusted database.
Here, we find the Examiner again broadly interprets the disputed
claim language. (See Ans. 12, ¶2). Turning to the reference, we find Eyal
discloses that “[e]ach media site may provide access to media through one or
more media links available at the site or through other means. The media
links identify web resources having media content.” (FF 1). Eyal further
discloses that metadata information is extracted from each media link, and
according to one embodiment, this extracted metadata may also be added to
a list or database of extracted metadata. (FF 3).
Thus, we agree with the Examiner that Eyal at least discloses
extracting metadata related to media instances (i.e., media links) from
sources other than a database. (FF 1, 3). We also find Eyal discloses that
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extracted metadata is added to a database 245. (FF 3-4; see also Eyal Fig.
2).
With respect to each portion of Eyal relied on by the Examiner in the
Answer, Appellants maintain that Eyal does not identically disclose
enhancing the extracted metadata by adding at least a portion of the contents
of the metadata record to the extracted metadata wherein the extracted
metadata is extracted from sources other than the trusted database and the
metadata record is identified in the trusted database. (App. Br. 14-16)
(emphasis added).
In response, the Examiner contends that the “claim simply ‘extracts
metadata from sources’ separately from [the] ‘enhancing’ step which can
easily occur within the database, thus [is] no different than Eyal.” (Ans. 13,
¶3).
Thus, the Examiner finds that Eyal anticipates the argued limitations
by disclosing that metadata extracted from sources other than the database is
stored in the database (DB management system 245, Fig. 2), and then the
stored extracted metadata is “enhanced” by adding it to at least a portion of
the contents of another metadata record.
We note that each independent claim before us on appeal requires an
identification of a metadata record in a trusted database where the identified
metadata record (1) must have had its contents stored before the media
instance is identified, and (2) must at least partially match the extracted
metadata. App. Br. 20-22, Claims 28, 39, and 48. Based upon our review of
the record, it appears the Examiner’s overly broad claim interpretation
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disregards these specific limitations that require the identified metadata
record that is added to the extracted metadata to have been “stored before the
media instance is identified and that at least partially match[es] the extracted
metadata.” (See id.). Because the Examiner has not clearly established how
the aforementioned limitations (1) and (2) are met by the Eyal reference, we
find again that speculation is required to affirm the Examiner on this record.
We decline to engage in speculation, and further note that an anticipation
rejection requires a clear mapping of each claim limitation to a
corresponding element in the reference.
Therefore, we again find the evidence before us supports Appellants’
position as argued in the Briefs. Accordingly, we reverse the Examiner’s
rejection of independent claims 28, 39, and 48 as being anticipated by Eyal.
Because we have reversed the Examiner’s § 102 rejection over Eyal for each
independent claim on appeal, we also reverse the Examiner’s § 102 rejection
over Eyal for each dependent claim on appeal.

CONCLUSIONS
1. Appellants have established the Examiner erred in rejecting claims
28-36 and 39-56 under 35 U.S.C. § 102(e) for anticipation over Day.
2. Appellants have established the Examiner erred in rejecting claims
28-36 and 39-56 under 35 U.S.C. § 102(e) for anticipation over Eyal.

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DECISION
We reverse the Examiner’s decision rejecting claims 28-36 and 39-56.

REVERSED

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