Ex Parte Adolph et al

Patent Trial and Appeal Board

Oct 9, 2012

10466228 (P.T.A.B. Oct. 9, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/466,228 07/11/2003 Dirk Adolph PD010004 8199
7590 10/09/2012
Joseph S Tripoli
Thomson Multimedia Licensing Inc
Patent Operations CN 5312
Princeton, NJ 08543-0028
EXAMINER
SMITH, CHENEA
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
10/09/2012 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 DIRK ADOLPH, ANDREI CHEVTSOV, MICHAEL DREXLER,
and AXEL KOCHALE
____________________

Appeal 2010-0064041
Application 10/466,228
Technology Center 2400
____________________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and
GREGORY J. GONSALVES, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Thomson Licensing. (App. Br. 1.)

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3-6, 8, and 9. Claims 2 and 7 have been canceled.
(App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method for transmitting to an interactive
television (TV) a video signal having embedded therein hyperlinks, wherein
each hyperlink is respectively assigned to a sub-area of the picture content of
the video signal. Each hyperlink includes contour information approximating
the contour of the sub-area associated therewith whereupon selecting any
point on the contour of the sub-area, the picture corresponding thereto can be
reproduced and displayed on the TV. (Fig. 1a, 1b, Spec. 3, ll. 16-24, Spec. 6,
ll. 13-31.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. Method for transmission or recording of a video signal with
embedded hyperlinks, wherein the hyperlinks enable a reproduction of
assigned information and/or execution of assigned actions, and
wherein the hyperlinks are assigned to a sub-area of the picture
content of the displayed video signal and can be activated by selecting
the assigned sub-area, and wherein hyperlink information regarding
the information to be reproduced and/or the action to be executed and
contour information representing an approximation of the contour of
the sub-area is transmitted or recorded wherein the video signal is
transmitted or recorded as a digital television signal in accordance
with an MPEG video standard with the hyperlink information and the
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contour information being inserted into user data of the picture layer,
where the contour information contains parameters for approximation
functions, said approximation functions being one of polynomials or
spline functions.
Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Portuesi US 5,774,666 Jun. 30, 1998
Klappert US 6,256,785 B1 Jul. 3, 2001
Winter EP 1069782 A2 Jan. 17, 2001

Rejection on Appeal
The Examiner rejects claims 1, 3-6, 8, and 9 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Portuesi, Klappert, and
Winter.

ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief, pages 4-15.
Representative Claim 1
Dispositive Issue: Have Appellants shown that the Examiner erred in
finding that the combination of Portuesi, Klappert, and Winter teaches or
suggests assigning hyperlinks to a sub-area of a picture content of a
displayed video signal, wherein the hyperlinks include contour information
representing an approximation of the sub-area, which can be activated upon
selecting the assigned sub-area as recited claim 1?
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Appellants argue that the Examiner erred in finding that the proposed
combination of refences teaches or suggests the disputed limitations
emphasized above. In particular, Appellants argue that while Portuesi and
Klappert disclose a plurality of hyperlinks associated with hot spots at fixed
locations on the screen of a display device, such hot spots do not teach the
sub-area of the picture content. (App. Br. 8-11.) According to Appellants,
the “hyperlinks are assigned to areas of the screen independently of any
‘sub-area of the picture content of the displayed video signal’ and
independently of any ‘contour’ associated with the sub-area.” (Id. 9.)
Further, Appellants argue that there is insufficient motivation to combine the
cited references, and that Klappert’s disclosure of a one way transmission
from the server to the client teaches away from the invention. (Id. 9, 12-15.)
In response, the Examiner finds that Portuesi’s disclosure of hot spots
within a displayed video signal teaches a sub-area, which can be activated
upon a user selecting a hyperlink associated therewith. (Ans. 7.) Further, the
Examiner finds that Klappert’s disclosure of coordinating hot spot locations
with a video signal wherein the hot spots are defined by different X and Y
coordinates teaches contour information representing an approximation of
the contour of a sub-area. (Id. 8-9)
On the record before us, we agree with the Examiner’s findings and
ultimate conclusion of obviousness. We note at the outset that while the
preamble of claims 1 and 3 set forth a method for transmission, recording or
reproduction of a video signal with embedded links, the respective bodies of
those claims fail to recite a series of steps that logically amount to the
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method of transmitting, recording or reproducing the video signal. As
drafted, these claims are merely directed to a video signal having embedded
therein a plurality of hyperlinks. While the language of those claims seeks
to establish a relationship between the video signal and the hyperlink
embedded therein, such a relationship merely qualifies the video signal data
without indicating how such data is being used for achieving the task of
transmitting, recording, and reproducing the video signal. Therefore, we
conclude that the content of such video signal including the hyperlinks to be
directed to nonfunctional descriptive material. Accordingly, we find
unpersuasive Appellants’ attempt to distinguish the disclosed hyperlink data
from the claimed hyperlink data, which serves no apparent function in the
claim. In a precedential Opinion, an expanded Board panel held that
nonfunctional descriptive material (sequence data) did not distinguish the
claimed computer-based system from a prior art system that was the same
except for its sequence data. See Ex parte Nehls, 88 USPQ2d 1883, 1887-88
(BPAI 2008) (precedential).2
Further, assuming arguendo that the claimed relationship between the
video signal and the hyperlinks were given patentable weight, we find that
the proffered combination would still teach or suggest such limitations. In
particular, we find that Portuesi discloses a video signal (movie) having

2 See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative) (aff’d 191 Fed. Appx. 959) (Fed. Cir. 2006) (stating if a
claimed phrase cannot alter how the process steps are to be performed to
achieve the utility of the invention or merely states an intended use or
purpose for the data, it is not entitled to patentable weight.)
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embedded therein a plurality of hyperlinks, which enable the reproduction of
the video. Each of the hyperlinks is assigned to a corresponding portion of
the movie as a way to help track the image portion associated therewith upon
being selected. (Col. 4, l. 63- col. 5, l. 16, col. 5, l. 59-col. 6, l. 19.)
Moreover, we find that Portuesi’s disclosure of a hot spot overlaid upon a
circular area of a picture (col. 6, ll. 20-26) is indicative of a sub-area of the
picture content for which the hyperlink associated therewith can activate the
corresponding picture portion. Furthermore, we agree with the Examiner’s
finding that Klappert’s disclosure of a hot spot positioned on a
predetermined location of a picture wherein the hot spot is delimited by a
rectangular area having fixed coordinates within which the picture portion
associated therewith can be activated teaches or at least suggest contour
information representing an approximate contour of the sub-area containing
certain parameters. (Col. 4, ll. 42-62, col. 5, ll. 14-26.) As discussed above,
we note that the claim does not require an actual contour of the sub-area to
be depicted. Rather, it merely calls for the hyperlinks containing contour
information representing an approximation of the contour sub-area. We are
therefore satisfied that Portuesi and Klappert disclose prior art elements that
perform their ordinary functions to predictably result in video signal having
embedded therein hyperlinks overlaid on regions of the picture to thereby
activate a selected picture portion upon a predefined region near the
hyperlinks being activated. Therefore, we find unavailing Appellants’
argument that there is insufficient motivation to combine teachings of
Portuesi and Klappert.
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Finally, we find unpersuasive Appellants’ argument that Klappert
teaches away from the invention. It has been held that “[w]hat the prior art
teaches and whether it teaches toward or away from the claimed invention
… is a determination of fact.” Para-Ordnance Mfg., Inc. v. SGS Importers
Int'l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995.) “A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994.) Teaching an
alternative or equivalent method, however, does not teach away from the use
of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965.)
While the portion of Klappert cited by Appellants may teach a one-way
communication from the server to the client, Appellants fail to show that it
otherwise discourages or criticizes two way communication between the
client and the server. It therefore follows that Appellants have not shown
error in the Examiner’s rejection of claim 1.
Claims 3-6, 8 and 9 (not argued separately) fall therewith. See 37
C.F.R. § 41.37(c)(1)(vii).
DECISION
We affirm the Examiner’s rejection of claims 1, 3-6, 8, and 9 as set
forth above.
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).

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AFFIRMED

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