Ex Parte Casile et al

Board of Patent Appeals and Interferences

Nov 18, 2010

09593573 (B.P.A.I. Nov. 18, 2010)

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.
09/593,573 06/14/2000 Olivier Casile YOR9-1999-0577-US1 7644
7590 11/19/2010
Anne Vochon Dougherty Esq
IBM Corporation
3173 Cedar Road
Yorktown Heights, NY 10598
EXAMINER
SHANG, ANNAN Q
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
11/19/2010 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 OLIVIER CASILE, RICHARD S. CHERNOCK,
PAOLO DETTORI, FRANK A. SCHAFFA, and DAVID I. SEIDMAN
_____________

Appeal 2009-006415
Application 09/593,573
Technology Center 2400

_______________

Before ROBERT E. NAPPI, JOHN C. MARTIN,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006415
Application 09/593,573

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-24 and 26.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part the Examiner’s rejections of these claims.

INVENTION
The invention is directed to a method, system, and apparatus for
cyclically broadcasting secondary content related to and during broadcasting
of primary content. See Spec. 1-6. Claim 1 is representative of the
invention and reproduced below:
1. A method for providing secondary content related to
primary content in a broadcast stream comprising the
steps of:
obtaining secondary content which relates to the main
primary content;
creating a schedule for cyclic delivery of said
secondary data content in a predetermined relation to the
non-cyclic broadcasting of the primary content; and
cyclically delivering said secondary content based on
said schedule.

REFERENCES
Fries US 6,317,885 B1 Nov. 13, 2001

REJECTION AT ISSUE
Claims 1-24 and 26 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Fries. Ans. 3-6.

2 Claims 25 and 27-30 have been cancelled.
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ISSUES
Claims 1-23
Appellants argue on pages 11-45 of the Appeal Brief that the
Examiner’s rejection of claims 1-23 is in error. More specifically,
Appellants argue that Fries does not disclose “delivering the secondary
content based on the schedule,” as disclosed in independent claims 1 and 19.
App. Br. 15 and 40. Dependent claims 2-18 and 20-23 depend upon claims
1 and 19, respectively, and contain similar limitations to claims 1 and 19.
Thus, with respect to claims 1-23, Appellants’ contention presents us
with the issue: Did the Examiner err in finding that Fries discloses delivering
secondary content based on the schedule?3
Claim 24
Appellants argue on pages 45-48 of the Appeal Brief that the
Examiner’s rejection of claim 24 is in error. Appellants argue that Fries
does not disclose a processing component, a buffering location, or a display
for displaying both the primary and secondary content as recited in claim 24.
Thus, with respect to claim 24, Appellants’ contention presents us
with the issue: Did the Examiner err in finding that Fries discloses a
processing component, a buffering location, and a display for displaying
both primary and secondary content as recited in claim 24?

3 Appellants make additional arguments regarding claims 1-23. App. Br. 11-
45. We do not reach these additional issues since the issue of whether Fries
discloses delivering secondary content based on the schedule is dispositive
of the case.
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Claim 26
Appellants argue on page 48 of the Appeal Brief that the Examiner’s
rejection of claim 26 is in error. Appellants argue that Fries does not
disclose “generating a request for retransmission of secondary content from
said broadcast location.” App. Br. 48.
Thus, with respect to claim 26, Appellants’ contention presents us
with the issue: Did the Examiner err in finding that Fries discloses
generating a request for retransmission of secondary content from said
broadcast location?

FINDINGS OF FACT (FF.)
1. Fries discloses a system that broadcasts both conventional television
programming along with still images or information pages from
content providers. Col. 3, l. 66-col. 4, l. 10.
2. The system consists of a cable head-end 22 that comprises an
interactive information server 46 and an RF modulator which are
connected to an external data source 48. Col. 4, ll. 3-13 and Fig. 1.
3. The interactive information server 46 receives data from the content
providers. The content is then stored or buffered by the information
server 46 for processing into a carousel 50 of multiple page images
and metadata. Then, the information is injected into the local cable
system. Col. 4, ll. 4-8; col. 19, l. 55-col. 20, l. 22; and Fig. 1.
4. A digital set-top box 28 receives the broadcasts from the cable
head-end 22 where the conventional television programming or still
images or information pages from content providers can be displayed
on a television set 30. Col. 4, ll. 13-20 and Fig. 1.
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5. In order to access the secondary content, a browser 62 is downloaded
into a set-top box’s 28 memory 82. When a user accesses the
information service channel, the browser 62 provides a page image
that contains links to additional information and the selected packet
identification (PID) is written to the PID filter 90. Col. 6, ll. 35-55,
col. 9, ll. 54-56, and Figs. 2-3.
6. The packet is then decoded by the MPEG2 Video Decoder 52, and
displayed on a television set 30. Col. 4, ll. 13-20, col. 9, l. 56, and
Figs. 2-3.

ANALYSIS
Claims 1-23
Appellants’ arguments have persuaded us of error in the Examiner’s
rejection of claim 1. Claim 1 recites “creating a schedule…and cyclically
delivering said secondary content based on said schedule.” Independent
claim 19 recites similar limitations. Claims 2-18 and 20-23 depend upon
independent claims 1 and 19. Appellants argue that there is nothing in Fries
that discloses creating a schedule and cyclically delivering secondary
content based on that schedule. App. Br. 15. We agree.
We disagree with the Examiner’s finding that Fries’ Carousel Server
creates a schedule and delivers secondary content based on the schedule.
Ans. 8. Fries discloses that the secondary data is delivered, not based upon a
created schedule, but rather, based upon user selection of secondary data.
FF 5. Thus, the reference does not meet the claim limitation and we will not
sustain the Examiner’s rejection of claims 1-23.

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Claim 24
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claim 24. Appellants argue that the references do
not teach a processing component, a buffer location, or a display for
displaying both primary and secondary content. App. Br. 45-48. The
Examiner has provided citations to the references disclosing where each of
these limitations is found. Ans. 20-21. We agree with the Examiner for the
reasons set forth below.
Appellants argue that Fries does not disclose a processing component
that identifies secondary content. App. Br. 46. However, Fries discloses
primary content that consists of programming from a local cable system and
secondary content that consists of data received from content providers. FF
2, 3. Fries discloses an information server 46 that receives the secondary
data from the content providers and injects it into the local cable system. FF
2, 3. When secondary data is requested by a user, the packet identification
(PID) associated with that data is decoded at the set-top box, i.e., processed,
by the MPEG2 Video Decoder 52. FF 6. Therefore, Fries’ information
MPEG2 Video Decoder 52 in the set top-top box corresponds to the claimed
processing component.
Appellants additionally argue that while Fries discloses storing
incoming signals, Fries does not teach buffering of the secondary content.
App. Br. 46. However, when secondary data is requested by a user, packet
identification (PID) associated with that data is written, i.e., stored, in the
PID filter 90 of the set-top box. FF 5. Therefore, the secondary data is
buffered in at least one buffer location.
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Finally, Appellants argue that Fries does not disclose displaying both
the primary and secondary content on a display component. App. Br. 47.
However, Fries discloses a television set 30 that displays both conventional
television programming and page data provided by the content providers.
FF 4, 6. Since, as noted above, the local cable system is the primary content
and data provided by the content providers is the secondary content, Fries
discloses displaying both primary and secondary content on a television
screen.
For the reasons shown above, Appellants’ arguments that Fries does
not teach the limitations found in claim 24 are not persuasive. Accordingly,
we sustain the Examiner’s rejection of claim 24.

Claim 26
Appellants’ arguments have persuaded us of error in the Examiner’s
rejection of claim 26. Claim 26 recites “a request component for generating
a request for retransmission of said secondary content from said broadcast
location.” Appellants argue that Fries does not contain a request for
retransmission, as required by the claim. App. Br. 48. The Examiner cites
portions of Fries where these limitations are believed to be found. Ans. 21.
However, after review of these portions of the reference, we do not find
where the reference discloses a request for retransmission of secondary
content. As such, we do not sustain the Examiner’s rejection of claim 26.

CONCLUSION
The Examiner erred in finding that Fries discloses delivering
secondary content based on the schedule.
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The Examiner did not err in finding that Fries discloses a processing
component, a buffering location, and a display for displaying both primary
and secondary content as found in claim 24.
The Examiner erred in finding that Fries discloses generating a
request for retransmission of secondary content from said broadcast location.

SUMMARY
The decision of the Examiner to reject claims 1-23 and 26 under 35
U.S.C. § 102(e) is reversed.
The decision of the Examiner to reject claim 24 under 35 U.S.C. §
102(e) 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).
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AFFIRMED-IN-PART

ELD

ANNE VOCHON DOUGHERTY ESQ.
IBM CORPORATION
3173 CEDAR ROAD
YORKTOWN HEIGHTS, NY 10598
9