Ex Parte Asmussen et al

Board of Patent Appeals and Interferences

Sep 6, 2012

09921057 (B.P.A.I. Sep. 6, 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.
09/921,057 08/03/2001 Michael L. Asmussen 007412.00984 8084
71867 7590 09/06/2012
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
DAYE, CHELCIE L
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
09/06/2012 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 MICHAEL L. ASMUSSEN, JOHN S. MCCOSKEY, and
WILLIAM D. SWART
____________

Appeal 2012-005349
Application 09/921,057
Technology Center 2100
____________

Before LANCE LEONARD BARRY, JEAN R. HOMERE, and
JOHN A. JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
This application returns to us after we affirmed the Examiner’s
rejection of then-pending claims 1-11 and 21-33. Ex parte Asmussen, No.
2009-002471 (BPAI Nov. 2, 2009). Prosecution was reopened after that
decision, and Appellants now appeal under 35 U.S.C. § 134(a) from the
Examiner’s subsequent rejection of claims 1-11, 21-23, 25-33, and 36-38.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Appellants’ invention constructs a suggestion database 308 of
metadata elements or words using a content metadata crawler 309. A search
suggestion engine 304 then uses indexed metadata to produce suggestion
lists from available content based on search request criteria. See generally
Spec. 14-17, 19-20; Figs. 6a-6b. Claim 1 is illustrative with key disputed
limitations emphasized:
1. One or more non-transitory computer readable media storing
executable instructions that, when executed by a computer, perform the
method of:

searching metadata related to aggregated content from a plurality of
media sources;

producing a metadata list based on the search, wherein the metadata
list comprises a plurality of metadata elements;

using the produced metadata list to index the metadata elements of the
metadata list;

storing the indexed metadata elements; and

receiving a message containing a first set of one or more search
request criteria, wherein receiving the message causes the computer
executing the instructions to perform the steps of:

producing a list of keywords,

creating a second set of one or more search request criteria by
modifying the first set of search request criteria with the produced list
of keywords, and

initiating a search of the indexed metadata elements using the
second set of search request criteria.

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THE REJECTIONS
1. The Examiner rejected claims 1, 21, 36, and 38 under 35 U.S.C.
§ 103(a) as unpatentable over Balogh (US 5,493,677; Feb. 20, 1996 (filed
June 8, 1994)),
1
Dudkiewicz (US 6,651,253 B2; Nov. 18, 2003 (eff. filed
Nov. 16, 2000)),
2
and Hendricks (US 5,798,785; Aug. 25, 1998 (eff. filed
Dec. 9, 1992)). Ans. 5-7.
3

2. Claims 2-11, 22, 23, 25-33, and 37 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Balogh, Dudkiewicz, Hendricks, and Cappi
(US 2002/0038308 A1; Mar. 28, 2002 (filed May 27, 1999)). Ans. 7-12.

THE OBVIOUSNESS REJECTION OVER BALOGH, DUDKIEWICZ, AND HENDRICKS
The Examiner finds that Balogh discloses every recited feature of
representative claim 1 except for (1) content aggregated from media sources,
and (2) receiving a message to (a) produce a keyword list; (b) create a
second set of search request criteria; and (c) initiate a search of indexed
metadata elements using that criteria, but cites Dudkiewicz as teaching
features (1) and (2) respectively in concluding that the claim would have
been obvious. Ans. 5-7, 12-14.

1
Although Balogh was filed after two of the present application’s parent
applications (08/160,281 and 07/991,074), Balogh’s qualification as prior art
is undisputed.
2
Although Dudkiewicz and Hendricks (cited below) were effectively filed
after three of the present application’s parent applications (08/906,469;
08/160,281; and 07/991,074), these references’ qualification as prior art is
undisputed. Dudkiewicz was also held to qualify as prior art for certain
relied-upon passages in the previous appeal. See Asmussen, at 4-11.
3
Throughout this opinion, we refer to (1) the Appeal Brief filed October 20,
2011; (2) the Examiner’s Answer mailed December 7, 2011; and (3) the
Reply Brief filed February 7, 2012.
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Appellants argue that the Examiner proposes three different
interpretations of the recited metadata list based on various features in
Balogh, none of which teaches or suggests certain limitations of claim 1.
App. Br. 6-8; Reply Br. 4-8.
4
According to Appellants, not only is Balogh’s
metadata not produced based on a search, but query results sent by Balogh’s
image center are not used to index or store metadata elements as claimed.
App. Br. 6-8. Appellants add that Balogh’s metadata expansion does not
search metadata related to aggregated content from media sources as
claimed. Reply Br. 4-8.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Balogh, Dudkiewicz, and Hendricks collectively would have taught or
suggested (1) searching metadata related to aggregated content from media
sources; (2) producing a metadata list based on the search, where the list
comprises metadata elements; (3) using the produced metadata list to index
the metadata elements; and (4) storing the indexed elements?

ANALYSIS
On this record, we find no error in the Examiner’s obviousness
rejection of representative claim 1. As the Examiner indicates (Ans. 13),
Balogh uploads metadata to the image center 120’s index querying service
306 which, after “expanding” the metadata, stores the current portion of the

4
Although Appellants argued only two proposed interpretations of the
recited metadata list in the Appeal Brief, Appellants nonetheless added a
third interpretation based on the Examiner’s remarks in the Answer. Reply
Br. 4.
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metadata (current word) in an index database portion of the image center’s
database processor 124. Balogh, col. 9, l. 50 – col. 10, l. 49; Figs. 1, 3, 8-9.
Since Balogh looks up each metadata word to expand it, Balogh therefore
searches metadata as claimed. See Balogh, col. 9, l. 65 – col. 10, l. 44; Fig.
9. Although claim 1 recites that this metadata is “related to” aggregated
content from media sources, this feature merely pertains to the metadata’s
content and therefore constitutes non-functional descriptive material since it
does not further limit the claimed invention functionally. Such non-
functional descriptive material does not patentably distinguish over prior art
that otherwise renders the claims unpatentable.
5
In any event, we see no
error in the Examiner’s position that Dudkiewicz teaches such aggregated
content. Ans. 6 (citing Dudkiewicz, col. 14, ll. 39-67).
And as the Examiner indicates (Ans. 13-14), based on Balogh’s
search, Balogh at least suggests producing a “metadata list” of current
metadata portions or words (i.e., “metadata elements”) that are used, at least
in part, to index and store the associated elements in an index database.
Balogh, col. 10, ll. 45-49; Fig. 9. That Balogh’s flow chart in Figure 9
returns to step 902 from step 907 to repeat the process for additional
metadata as the Examiner indicates (Ans. 13-14) only bolsters this
conclusion.
Even assuming, without deciding, that Balogh stores only current
metadata portions (words) in the index database portion, and not additional
expanded location, name, and semantic metadata as Appellants seem to

5
See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte
Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential) (discussing
cases pertaining to non-functional descriptive material).
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suggest (see Reply Br. 6-7), the claim still does not preclude the “metadata
list” of current words that is used to index and store the associated metadata
elements. In any event, we see no reason why this additional metadata could
not likewise be stored in the index database, particularly since the arrows
from the respective location, name, and semantic metadata expansion steps
904-906 in Balogh’s Figure 9 point directly to the index database storage
step 907.
Appellants’ arguments (App. Br. 6-8; Reply Br. 4-8) are not
commensurate with the scope of the claim and are unavailing for the reasons
noted above. Nor will we consider Appellants’ arguments regarding
Dudkiewicz (Reply Br. 7-8), for they were presented for the first time in the
Reply Brief and are therefore waived as untimely. See Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not.”).
Nevertheless, even if we were to consider these belated arguments, we are
unpersuaded of error in the Examiner’s rejection based on the cited
references’ collective teachings.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 21, 36, and 38 not separately argued with
particularity.

THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejection of claims 2-11,
22, 23, 25-33, and 37. Ans. 7-12. Despite nominally arguing these claims
separately, Appellants reiterate similar arguments made in connection with
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claim 1 and allege that the additional cited references fail to cure those
purported deficiencies. App. Br. 8; Reply Br. 9. We are not persuaded by
these arguments, however, for the reasons previously discussed.

CONCLUSION
The Examiner did not err in rejecting claims 1-11, 21-23, 25-33, and
36-38 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-11, 21-23, 25-33, and 36-
38 is affirmed.
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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