Ex Parte Davis et al

Patent Trial and Appeal Board

May 12, 2016

12271772 (P.T.A.B. May. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/271,772 11/14/2008
23735 7590 05/16/2016
DIGIMARC CORPORATION
9405 SW GEMINI DRIVE
BEAVERTON, OR 97008
FIRST NAMED INVENTOR
Bruce L. Davis
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Pl442-R 4928
EXAMINER
PEREZ FUENTES, LUIS M
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
05/16/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
dl-patentnotice@digimarc.com
lisa. par kin son @digimarc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE L. DA VIS, TONY F. RODRIGUEZ,
BRIANT. MACINTOSH, and WILLIAM Y. CONWELL
Appeal2014-007089
Application 12/271,772
Technology Center 2400
Before JOHN F. HORVATH, NABEEL U. KHAN, and
AARON W. MOORE, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 3-5, 7, and 9-32, which constitute all pending claims in this
application2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellants, the real party in interest is Digimarc Corporation.
App. Br. 3.
2 Claims 2, 6, and 8 have been cancelled. App. Br. 30, 31 (Claims App'x).
Appeal2014-007089
Application 12/271,772
THE INVENTION
According to Appellants, the invention relates to enhancing user
interactions with televisions and television programming, through use of
portable devices such as cell phones. App. Br. 4. A cell phone is used to
"forage" media content from a user's environment, such as a television
program playing in an airport lounge, by employing the cell phone's
microphone or camera to capture some of the media content in the user's
environment. See Abstract; see also Spec. 2. A digital watermark or other
data extracted from the content is used to identify the television program,
and enable a variety of actions, such as instructing a DVR to record the
remainder of the television program or a rebroadcast of the program.
Abstract.
Independent claim 1 is illustrative and is reproduced below.
1. A method for remotely programming a video recorder,
comprising the acts:
with a user-carried, microphone-equipped portable
device, capturing ambient audio;
decoding plural-bit auxiliary information added to the
audio as a steganographic digital watermark prior to its capture;
querying a data structure with at least part of the decoded
information;
as a result of said querying, receiving information
identifying an audio-visual program to which the captured
audio corresponds;
with a user interface associated with the portable device,
presenting information to the user identifying the audio-visual
program, based on the received information; and
determining whether said audio-visual program is
scheduled for availability at some point in the future on a
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content distribution system to which the video recorder has
access;
presenting information about upcoming availability via
the user interface; and
programming the video recorder to record the audio-
visual program at said point in the future.
REFERENCES and REJECTIONS
1. Claims 1, 3-5, 11, and 19-32 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Levy et al. (US 2003/0012548 Al; Jan. 16,
2003) and Blake (US 2008/0184322 Al; July 31, 2008).
2. Claims 7, 9, 10, and 12-14 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Levy.
3. Claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Levy and Padgitt et al. (US 2004/0155888 Al; Aug. 12,
2014).
4. Claims 16-18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Blake3 and Szolyga et al. (US 2004/0183912 Al; Sept. 23,
2004).
3 The Final Action states that claims 16-18 are rejected over Levy and
Szolyga, rather than Blake and Szolyga. Final Act. 13. We note, however,
that the substance of the rejection does not rely upon Levy, but instead relies
upon Blake. See Final Act. 13-14. Consequently, we treat the rejection as a
rejection over the combination of Blake and Szolyga.
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Application 12/271,772
I. Claim 1
ANALYSIS
Appellants argue "[ n ]either reference [Levy or Blake] ... teaches
'determining whether' the identified program is scheduled for availability at
some point in the future, as required by claim 1." App. Br. 12. In particular,
Appellants argue "there is no need for Blake's system to determine whether
the program is scheduled for availability in the future. As indicated by cited
paragraph 0006, the program's availability in Blake is a given." App. Br.
13.
We are unpersuaded by Appellants' arguments. The Examiner finds
Blake teaches allowing users to schedule the recording of a program from a
remote location. Final Act. 7 (citing Blake, Abstract, i-fi-1 6, 8). We agree
that in order to schedule such a program for recording the program must be
determined to be available for recording.
Accordingly, we sustain the Examiner's rejection of claim 1, and of
claims 3 and 5 which stand or fall with claim 1. See App. Br. 13, 15.
II. Claim 4
The Examiner finds "Levy clearly discloses a watermark decoding
process as claimed [par. 7], and communication capabilities [between] the
server and other network elements using peer2peer architecture [par. 0026]."
Ans. 9.
Appellants argue that Levy "does not teach sending data
corresponding to captured ambient audio to a remote server for decoding ...
. " App. Br. 15. Further, Appellants argue "paragraph 0026 concerns
distribution of content to users. It does not teach sending captured audio
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Application 12/271,772
data from a user's portable device to a remote server, and decoding plural-bit
auxiliary information at the remote server." Reply Br. 4.
We are persuaded of Examiner error for the reasons argued by
Appellants. Specifically, we agree that paragraph 22 of Levy does not teach
sending data corresponding to captured ambient audio to a remote server,
and paragraph 26 addresses peer-to-peer content distribution, not content
identification via the transmission of captured ambient audio. Although
client-server architectures, and sending audio data captured at a client to a
remote server for purposes of content identification may be within the
knowledge of one of ordinary skill in the art, the Examiner's findings fail to
adequately articulate and establish such facts by a preponderance of the
evidence.
Accordingly, constrained by the record before us, we do not sustain
the Examiner's rejection of claim 4.
III. Claim 7
The Examiner finds Levy teaches the limitation "querying a first data
structure" by querying a store of meta-data associated with a movie (such as
Mission Impossible). The Examiner finds Levy teaches the limitation
"querying a second data structure" by querying a catalog of available audio
and/ or video that can be searched to identify content related to the movie
(such as sequels to Mission Impossible). Final Act 9--10 (citing Levy i-f 22);
see also Ans. 9--10.
Appellants argue Levy does not teach a second query that results in
information about the availability of an audio-visual program to which the
captured audio relates. App. Br. 15-16. In particular, Appellants argue that
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Application 12/271,772
the catalog, relied upon by the Examiner, identifies "related content" (such
as other movies in the Mission Impossible series) but does not teach "that
this catalog provides information about the availability of the very Mission
Impossible movie from which audio was captured." App. Br. 17.
We are unpersuaded by Appellants' arguments because they are not
commensurate with the scope of claim 7. Claim 7 requires that the second
query result in information about the availability of an audio-visual program
to which the captured ambient audio relates. Thus, under a reasonable
interpretation of the claim, information about the availability of content
related to Mission Impossible (from which audio is captured), such as
sequels to Mission Impossible, would satisfy the claim. Further, we agree
that by searching the catalog for related content and presenting the results of
such a search, Levy teaches receiving information about the availability of
such content.
Accordingly, we sustain the Examiner's rejection of claim 7. We also
sustain the rejection of claims 9--12, which stand or fall with claim 7. See
App. Br. 17.
IV. Claim 13
The Examiner finds paragraph 84 of Levy teaches "presenting
information to the user indicating that the audio-visual program is or will be
available for delivery to the user on a physical medium ... " as recited in
claim 13. Final Act. 11.
Paragraph 84 of Levy reads: "In addition to watermarks encoded at
time of production and distribution, a further watermark may be added at the
theatre, e.g., including time and date of screening."
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Appellants argue this paragraph does not teach the disputed limitation.
We agree. Accordingly, we do not sustain the Examiner's rejection of claim
13.
V. Claim 14
The Examiner finds Levy teaches "presenting an index of the audio-
visual program to the user as a series of informational panes, displayed in
cover-flow fashion" by disclosing that search results can be presented to the
user for further linking. Final Act. 12 (citing Levy i-f 22); see also Ans. 10.
Appellants argue4 "Levy is silent about presenting an index of the
program as a series of informational panes, displayed in cover-flow
fashion." App. Br. 19.
We agree with Appellants. Paragraph 22 of Levy does not teach or
suggest presenting information displayed in cover-flow5 fashion.
Accordingly, we do not sustain the Examiner's rejection of claim 14. For
the same reasons, we also do not sustain the Examiner's rejection of claim
15, which depends from claim 14.
4 Appellants present additional arguments for patentability of claim 14.
However, because the identified argument is dispositive with respect to
claim 14, we do not reach the merits of these additional arguments.
5 In case of further prosecution, we note that, by Appellants' own admission,
cover-flow presentations were known and in use as early as 2006, before the
priority date of the current Application. See App. Br. 19 n.43. Evidence of
such cover-flow presentations may be useful in showing the obviousness of
claim 14.
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VI. Claim 16
The Examiner finds Blake teaches "processing the excerpt to derive a
corresponding identifier," as recited in claim 16, by disclosing a "central
processor capable of receiving and processing user input to determine
program data associated with a program desired to be recorded." Final Act.
14 (citing Blake i-f 8).
Appellants argue6 "[p ]rocessing of 'user input' is not what
Appellant[ s '] claim 16 requires. Claim 16 requires processing the captured
excerpt of the television program." App. Br. 21.
We agree with Appellants. Paragraph 8 of Blake teaches a central
processor that processes user input, not an excerpt of a program rendered on
a television, as required by claim 16. Although the Examiner rejects claim
16 as unpatentable over Levy and Szolyga, the Examiner relies on paragraph
8 of Blake for teaching the processing limitation, rather than paragraph 22 of
Levy.
Accordingly, constrained by the record before us, we do not sustain
the Examiner's rejection of claim 16. For the same reasons, we do not
sustain the Examiner's rejection of claim 17, which depends from claim 16.
VII. Claims 18 and 19
In rejecting claims 18 and 19, the Examiner relies entirely upon the
analysis of claims 16 and 1, respectively. Final Act. 15. Appellants argue
claims 18 and 19 include limitations not found in claims 16 and 1,
6 Appellants present additional arguments for patentability of claim 16.
However, because the identified argument is dispositive with respect to
claim 16, we do not reach the merits of these additional arguments.
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respectively. App. Br. 24. For example, Appellants argue "the concluding
clause [of claim 18] requires that 'users of first and second devices are
presented different information related to the program being rendered by the
television.' ... No such limitation has been addressed in the Final
Rejection." App. Br. 24. Similarly, Appellants argue "[n]o art has been
identified as teaching presenting information 'relating to operation of that
particular television system,"' as required by claim 19. App. Br. 24.
We agree the Examiner has not addressed all the limitations of claims
18 and 19 and, therefore, has not presented a prima facie case of
obviousness for either claim. Accordingly, on the record before us, we do
not sustain the Examiner's rejection of claims 18 and 19. We also do not
sustain the Examiner's rejection of claims 20-24, which depend from claim
19.
VIII. Claim 25
Appellants argue
claim 25 requires also identifying from a database at least one
different second program item that preceded or follows the first
program item (this database being the database queried with an
identifier derived from a captured program excerpt to identify
the first program item). Neither Levy nor Blake teaches such
limitation.
App. Br. 27.
The Examiner finds paragraph 22 of Levy teaches this limitation. We
agree with the Examiner and are unpersuaded of Examiner error. Paragraph
22 teaches searching through a store of meta-data associated with a movie,
such as Mission Impossible, from which ambient audio is captured. This
meta-data can include information about related content, such as titles of
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Application 12/271,772
prequels and sequels. Levy i122. Under the broadest reasonable
interpretation of claim 25, identifying prequels and sequels teaches
identifying from a database at least one different second program item that
preceded or follows the first program item.
Accordingly, we sustain the Examiner's rejection of claim 25. We
also sustain the Examiner's rejection of claims 26-28, 31, and 32, which
stand or fall with claim 25. See App. Br. 27.
IX. Claim 29
Claim 29, which depends from claim 25, recites "the presenting
comprises presenting to the user a graphical depiction of plural program
items and their relative ordering." The Examiner finds Levy teaches this
limitation by disclosing "a catalog of available audio and/or video can then
be searched in accordance with such meta data to identify related content.
The results of the search can be presented to the viewer." Final Act. 17
(citing Levy i-f 22).
Appellants argue paragraph 22 of Levy "is silent about presenting a
graphical depiction of plural program items and their relative ordering."
App. Br. 28. We agree and are persuaded of Examiner error. Although it
may have been within the level of ordinary skill in the art to graphically
depict, in order, an identified item and its preceding and succeeding items,
the Examiner's findings fail to adequately articulate and establish such facts.
Accordingly, on the record before us, we do not sustain the
Examiner's rejection of claim 29.
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X. Claim 30
Claim 30, which depends from claim 29, recites "the graphical
depiction comprises a cover flow-like presentation of the program items and
their sequence." The Examiner again cites to paragraph 22 as disclosing this
limitation.
Appellants argue "Levy has no teaching of a cover flow interface."
App. Br. 28. As we explained with respect to claim 14, we agree that Levy
does not teach or suggest a cover flow presentation. 7 Thus, for the reasons
stated with respect to claim 29, and for the additional reason that the
Examiner has not established Levy teaches a cover flow presentation, we do
not sustain the Examiner's rejection of claim 30.
DECISION
The Examiner's rejection of claims 1, 3, 5, 7, 9--12, 25-28, 31, and 32
are affirmed.
The Examiner's rejection of claims 4, 13-24, 29, and 30 are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
7 But see n.5, supra.
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