Ex Parte Andrade et al

Board of Patent Appeals and Interferences

Jul 19, 2012

09841644 (B.P.A.I. Jul. 19, 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.
09/841,644 04/23/2001 David de Andrade 007412.01065 6427
71867 7590 07/20/2012
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
SALTARELLI, DOMINIC D
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
07/20/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID de ANDRADE and RANJIT SAHOTA,
____________

Appeal 2010-003701
Application 09/841,644
Technology Center 2600
____________

Before, JOSEPH F. RUGGIERO, SCOTT R. BOALICK, and
BRIAN J. McNAMARA, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003701
Application 09/841,644

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SUMMARY

Appellants appeal from the Examiner’s final rejection of claims 1-6, 8, 10,
11, 13-16, 18, 20, and 39-42. We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to recognizing a pattern in an unmodified
broadcast datastream and, prior to broadcasting the datastream, automatically
inserting into it an interactive TV trigger associated with the recognized pattern.
(Spec. 2)
Claim 1 is illustrative:

1. In an interactive television (TV) environment, a method comprising:

recognizing, using a pattern engine, one or more patterns in an unmodified
broadcast data stream;

accessing a repository storing attributes concerning interactive TV triggers
to be inserted into the broadcast data stream and determining whether a pattern
recognized by the pattern engine is to be associated with a one of the interactive
TV triggers; and, if so, then

prior to broadcasting, automatically inserting an interactive TV trigger
determined to be associated with a recognized pattern into the broadcast data
stream.

THE REJECTIONS
Claims 39 and 40 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter
Claims 1, 2, 5, 6, 8, 11, 15, 16, 18, and 39-42 are rejected under 35 U.S.C.
§ 102(e) as anticipated by U. S. Patent 5,929,849 (Kikinis).
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Claims 3, 4, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kikinis in view of U.S. Patent 5,774,666 (Portuesi).
Claims 10 and 20 are rejected under 35 U.S.C. § 103(a) over Kikinis.
.

THE REJECTION UNDER 35 U.S.C. § 101
CONTENTIONS
Appellants and the Examiner agree that claims 39 and 40 are drawn to
functional descriptive material encoded on a tangible machine-readable medium.
(Ans. 6, Reply Br. 3-4).1 However, the Examiner finds that paragraph [0034] of
the specification defines the claimed tangible machine-readable medium in a
manner that encompasses non-statutory subject matter. (Ans. 6). The Examiner
bases this finding on the description in paragraph [0034] that memory device 238
“provides (i.e., stores and/or transmits) information in a form readable, e.g., by
CPU 234.” Id. Because paragraph [0034] states that the memory device can
transmit information and a signal can be transmitted on a tangible signal bearing
medium, the Examiner finds that the tangible machine-readable medium in the
claim extends to signals, which are non-statutory subject matter. Id. Appellants
argue that the claims are drawn to the medium on which computer instructions are
encoded and not the signals representative of the instructions. (Reply Br. 3).

1 Throughout this opinion we refer to the Appeal Brief filed on November 17,
2008, the Examiner’s Answer mailed on February 18, 2009 and the Reply Brief
filed on April 17, 2009. We further note the Supplemental Brief filed on July 22,
2009.
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ANALYSIS
Claims 39 and 40 both recite a tangible machine-readable medium encoded
with computer executable instructions. (emphasis added). We agree with
Appellants that claims 39 and 40 are directed to the medium itself rather than the
instructions encoded on the medium, and that paragraph 34 of the Specification
does not describe the medium itself as encompassing signals. (Reply Br. 2-3).
Therefore, we conclude that these claims are both drawn to statutory subject
matter.

THE REJECTIONS UNDER 35 U.S.C. § 102(e)
CONTENTIONS
As the basis of the rejections under 35 U.S.C. § 102(e), the Examiner finds
that Kikinis discloses the claimed elements of the invention, including inserting an
interactive TV trigger into a broadcast data stream, at column 10, lines 18-67 (Ans.
3-4). The Examiner further concludes that at column 11, lines 1-25, Kikinis
discloses using a pattern engine to recognize patterns in an unmodified broadcast
data stream (Ans. 7-9).
Appellants contend that the disclosure in Kikinis at column 10, lines 18-67
concerns pre-broadcast activities rather than activities concerning a broadcast data
stream because the broadcast stream does not yet exist. (Reply Br. 4).
Appellants admit that Kikinis discloses inserting a URL into a live
broadcast, but contend that Kikinis differs from Appellants’ claims. (Reply Br. 6).
The primary area of disagreement is whether Kikinis discloses recognizing, using a
pattern engine, one or more patterns in an unmodified broadcast data stream and
automatically inserting interactive TV triggers, as claimed. (App. Br. 5). The
Examiner finds that Kikinis teaches this claimed feature by its disclosure of
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Application 09/841,644

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inserting dynamic URLs in a real-time live broadcast based on bar codes on
persons or objects in the scene being imaged. (Ans. 8). Appellants contend that
Kikinis discloses using outside instrumentalities, e.g., a barcode reader or scanner
external to the broadcast system, to read bar codes directly from objects or
individuals that are the subject of a television broadcast. Id. Appellants further
contend that reading bar codes from a player’s uniform or receiving transmissions
from another transmitter is a markedly different scheme from that recited in the
claims, where a pattern engine is used to recognize patterns in an unmodified
broadcast data stream. (App. Br. 6, Reply Br. 6).
The Examiner contends that Appellants' assertion is inconsistent with
Kikinis, since Kikinis does not mention a separate bar code reader. (Ans. 7).
Citing column 11, lines 1-25 of Kikinis, the Examiner contends that Kikinis
discloses an imaging apparatus, such as a TV camera, which reads the bar codes so
that the URL corresponding to the bar coded object or person can be inserted.
(Ans. 8).
ISSUE
Did the Examiner err in finding that Kikinis discloses recognizing a pattern
and, based on the recognized pattern, inserting an interactive TV trigger into a
broadcast data stream prior to broadcasting it?

ANALYSIS
Appellant argues patentability of the claims rejected under 35 U.S.C §
102(e), i.e., claims 1, 2, 5, 6, 8, 11, 15, 16, 18 and 39-42, as a group . Accordingly,
we address these claims together, with claim 1 being exemplary.
Kikinis teaches inserting a dynamic URL into a data stream to be broadcast.
Fig. 3B illustrates the steps for preparing a TV transmission with a dynamic URL.
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(Col. 10, ll. 19-20). Although Appellants argue that the disclosure in Kikinis
concerns “prebroadcast” activities, the claimed activities of recognizing a pattern
in an unmodified broadcast data stream, determining whether the recognized
pattern is to be associated with an interactive TV trigger and inserting the
interactive TV trigger into the broadcast data stream all take place prior to
broadcasting and therefore are “prebroadcast” activities.
Appellants' argument that claim 1 is distinguished over Kikinis because
Kikinis turns to outside instrumentalities (e.g, UHF transmitters) to notify
equipment about the need to insert a URL, does not recognize that claim 1 is silent
about the source of the “broadcast data stream.” Claim 1 is not limited to a
“broadcast data stream” created from a single signal source. Given its broadest
reasonable interpretation, claim 1 encompasses any “broadcast data stream”
whether that data stream is generated from signals provided by a single device or
from signals assembled from multiple devices. Claim 1 only requires a pattern
engine that recognizes the presence of patterns in an unmodified broadcast data
stream to determine what, if any, interactive trigger should be inserted into the
broadcast data stream before transmitting it.
The teachings in Kikinis concerning a live, real time imaging system with
dynamic URL insertion are relevant to pattern recognition and URL insertion into
a broadcast data stream. Kikinis discloses that the live scene data received by a
single imaging apparatus, such as a TV camera, includes bar code information
imaged from a bar code attached to a player or other object in the scene. See, Col.
11, ll. 7-28. In the context of inserting a URL specific to an object or person into
the broadcast data stream, Kikinis discloses that “bar codes on a players clothing
may be used, the codes readable by the imaging apparatus.” (Col. 11, ll. 23-25).
Kikinis discloses that the imaging apparatus is a TV camera. (Col. 11, ll. 19-25).
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Thus, Kikinis discloses that the TV camera images the scene, including the bar
codes within the scene, recognizes the bar code patterns and inserts an appropriate
URL into the broadcast data stream before transmitting it. Therefore, we conclude
that the Examiner did not err in finding that Kikinis anticipates independent claim
1. Since Appellants have presented no other arguments for patentability
concerning claims 2, 5, 6, 8, 11, 15, 16, 18, and 39- 42, we conclude that the
Examiner did not err in rejecting these claims.

THE REJECTIONS UNDER 35 U.S.C. § 103(a)

The rejection of claims 3, 4, 13, and 14 over Kikinis in view of Portuesi
Appellants argue that neither Kikinis nor Portuesi teaches or suggests the use
of a pattern engine to recognize patterns in an unmodified broadcast data stream.
(App. Br. 6, Reply Br. 7). However, as discussed above, Kikinis provides such a
teaching. The Examiner cites column 5, lines 5-12 of Portuesi to teach inserting
URLs into a broadcast, such as Portuesi’s movie file, based on URL association
with audio information. (Ans. 5). Appellants’ arguments are drawn only to
whether Portuesi discloses the pattern engine and do not directly rebut the
Examiner’s finding or the combination with Kikinis. Therefore we conclude that
the Examiner did not err in finding claims 3, 4, 13, and 14 as unpatentable over
Kikinis in view of Portuesi.

The rejection of claims 10 and 20 over Kikinis
Appellants have not specifically argued that the use of the recited ATVEF
triggers provides an independent basis for the patentability of claims 10 and 20.
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Therefore, we conclude that the Examiner did not err in rejecting claims 10 and 20
as unpatentable under 35 U.S.C. § 103(a).

CONCLUSION
We conclude that the Examiner erred in finding that claims 39 and 40 do not
recite patentable subject matter under 35 U.S.C. § 101.
We conclude that the Examiner did not err in finding that Kikinis discloses
recognizing a pattern and, based on the recognized pattern, inserting an interactive
TV trigger into a broadcast data stream prior to broadcasting it.

ORDER
We reverse the Examiner’s rejection of claims 39 and 40 under 35 U.S.C.
§ 101.
We affirm the Examiner’s rejection of claims 1, 2, 5, 6, 8, 11, 15, 16, 18, and
39-42 under 35 U.S.C. § 102(e) as anticipated by Kikinis.
We affirm the Examiner’s rejection of claims 3, 4, 13, and 14 under 35
U.S.C. § 103(a) as unpatentable over Kikinis in view of Portuesi.
We affirm the Examiner’s rejection of claims 10 and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Kikinis.

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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