Ex Parte Bergmann et al

Board of Patent Appeals and Interferences

Mar 26, 2012

10108650 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ERNEST E. BERGMANN and SCOTT W. MCLELLAN
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Appeal 2009-015201
Application 10/108,650
Technology Center 2400
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Before DAVID M. KOHUT, MICHAEL R. ZECHER, and
BRUCE R. WINSOR, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-015201
Application 10/108,650

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s rejection of claims 1-20. App. Br. 3. We have jurisdiction
under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellants’ Invention
Appellants invented a system and method for delivering a video
representation that includes programming a video viewing device via the
Internet. Spec. ¶ [0001].
Illustrative Claim
1. A video delivery system for use with a video
presentation, comprising:

a receptor subsystem configured to receive a request
from a user to generate a video representation having a selected
content of said video presentation, wherein said video
presentation is a future video broadcast and said selected
content is an edited version of said video presentation; and

a rejoinder subsystem coupled to said receptor subsystem
configured to control a video viewing device configured to
generate said video representation for said user based on said
request.

Prior Art Relied Upon
Berberet US 2003/0226150 A1 Dec. 4, 2003
(PCT filed Jan. 19, 2001)

Rejection on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Berberet. Ans. 3-6.

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Examiner’s Findings and Conclusions
The Examiner finds that Berberet’s disclosure of watching scheduled
broadcasts, in conjunction with allowing subscribers to view the entire
broadcast schedule of both previously broadcast and upcoming programs,
describes “wherein the video presentation is a future video broadcast[,]” as
recited in independent claim 1. Ans. 3 and 7.
Appellants’ Contentions
Appellants contend that Berberet’s scheduled broadcast amounts to a
broadcast that is “in progress” and can be sampled by a viewer in order to
decide what to watch. App. Br. 9; Reply Br. 2. As such, Appellants argue
that since Berberet discloses sampling scheduled broadcasts, Berberet does
not describe future broadcasts, as required by independent claim 1. Id.
Further, Appellants contend that Berberet’s disclosure of viewing the entire
broadcast schedule of both previously broadcast and upcoming programs
only amounts to viewing a schedule of future broadcasts and, therefore does
not describe generating a video presentation of a future video broadcast, as
claimed. Reply Br. 3.

II. ISSUE
Did the Examiner err in finding that Berberet describes “wherein said
video presentation is a future video broadcast[,]” as recited in independent
claims 1, 6, 11, and 16?

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Application 10/108,650

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III. ANALYSIS
Claims 1, 6, 11, and 16
We do not find error in the Examiner’s anticipation rejection of
independent claims 1, 6, 11, and 16, which recites, inter alia, “wherein said
video presentation is a future video broadcast[.]”
At the outset, we adopt the Examiner’s findings of fact as our own. In
particular, we find that Berberet’s scheduled broadcasts (¶ [0016]), which
includes upcoming programs (¶ [0051]), describes video broadcasts that will
be broadcast in the future. Consequently, we agree with the Examiner that
Berberet describes the disputed claim limitation. See Ans. 3 and 7.
Alternatively, Appellants cannot rely solely upon the content or type
of the claimed “video presentation” to patentably distinguish independent
claims 1, 6, 11, and 16 over the prior art of record. The content or type of
video presentation is non-functional descriptive material, which is not
entitled to any patentable weight. See In re Lowry, 32 F.3d 1579, 1583 (Fed.
Cir. 1994) (“Lowry does not claim merely the information content of a
memory [. . .] nor does he seek to patent the content of information resident
in a database.”). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI
2008) (precedential); Ex parte Curry, 84 USPQ2d 1272, 1274-75 (BPAI
2005) (informative), aff’d, slip op. 06-1003 (Fed. Cir. June 2006) (Rule 36).
It follows that the Examiner has not erred in finding that Berberet anticipates
independent claims 1, 6, 11, and 16.
Claims 2-5, 7-10, 12-15, and 17-20
Appellants reiterate what dependent claims 2-5, 7-10, 12-15, and 17-
20 recite and generally allege that Berberet does not describe the additional
claim elements in combination with the base claim elements. See App. Br.
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11-15. Merely pointing out what each dependent claim recites and nakedly
asserting that Berberet does not describe the corresponding claim elements
does not amount to a separate patentability argument. See 37 C.F.R.
§ 41.37(c)(vii) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”);
see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
detail than argued by an appellant, looking for [patentable] distinctions over
the prior art.”). It follows that the Examiner has not erred in finding that
Berberet anticipates dependent claims 2-5, 7-10, 12-15, and 17-20.

IV. CONCLUSION
The Examiner has not erred in rejecting claims 1-20 as being
anticipated under 35 U.S.C. § 102(e).

V. DECISION
We affirm the Examiner’s decision to reject claims 1-20.
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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