10208810 (P.T.A.B. Nov. 24, 2014)

Ex Parte Holtz et al

Patent Trial and Appeal BoardNov 24, 2014

10208810 (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/208,810 08/01/2002 Alex Holtz PU040197 5757 7590 11/24/2014 Thomson Licensing LLC 2 Independence Way P O Box 5312 Princeton, NJ 08543 EXAMINER PENG, HSIUNGFEI ART UNIT PAPER NUMBER 2426 MAIL DATE DELIVERY MODE 11/24/2014 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALEX HOLTZ, ROBERT J. SNYDER, MARCEL LaROCQUE, WILLIAM H. COUCH, BENJAMIN McALLISTER, CHARLES M. HOEPPNER, KEITH GREGORY TINGLE, and DAVID A. ARMBRUSTER ____________ Appeal 2012-005407 Application 10/208,810 Technology Center 2400 ____________ Before CARLA M. KRIVAK, JOHNNY A. KUMAR, and MICHELLE N. WORMMEESTER, Administrative Patent Judges. WORMMEESTER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 3–16, 27, 43, 45, 48, and 52. Claims 2, 22–26, 28, 30, 31, 36, and 47 have been cancelled, and claims 17–21, 29, 32–35, 37–42, 44, 46, and 49–51 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-005407 Application 10/208,810 2 STATEMENT OF THE CASE Introduction Appellants’ invention relates to distributing media productions over a communications network. (See Specification ¶ 4.) Exemplary independent claim 1 reads as follows: 1. A method of editing and distributing media throughout a network, comprising the steps of: (1) receiving media from a production, wherein said production comprises one or more elements of a story; (2) associating auxiliary information with said story as said story is produced in said production; and (3) enabling display of said media and said auxiliary information at one or more media clients. Rejections Claims 1, 3–11, 13–16, 27, 43, 45, 48, and 52 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Marler (US 2005/0028217 A1, published February 3, 2005). (See Ans. 4–6.) Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Marler and Yamaguchi (US 2004/0237122 A1, published November 25, 2004). (See Ans. 6.) ANALYSIS 35 U.S.C. § 102 Rejection of Claims 1, 3–11, 13–16, 27, 43, 45, 48, and 52 Appellants argue the Examiner erred in rejecting independent claim 1 because Marler fails to disclose the feature “associating auxiliary information with said story as said story is produced in said production.” (See App. Br. 7–9; Reply Br. 3–5.) We disagree with Appellants. Appeal 2012-005407 Application 10/208,810 3 As the Examiner points out, Marler teaches a content creator that originates enhancement data (or auxiliary information) and television content to be transmitted by a transport operator system. (See Ans. 7; Marler ¶ 13.) The Examiner finds this teaching in Marler discloses associating auxiliary information with a story as the story is produced. (See Ans. 7–8.) Given the cited portions of Marler, we consider the Examiner’s finding to be reasonable. (See also Marler ¶ 15 (“ancillary information other than enhancement data may be transmitted with the A/V content”).) Appellants’ arguments are directed to paragraph 35 of Marler. (See App. Br. 8; Reply Br. 3–4.) We note Appellants’ contention that “Marler et al. says nothing in paragraph [0035] or anywhere else in their specification about receiving content during production of a story or story element.” (See Reply Br. 4.) Appellants provide no persuasive evidence or argument regarding why paragraph 13 of Marler, which the Examiner cites, (Ans. 7), does not meet the claimed disputed limitation. Without such explanation from Appellants to consider, we are unpersuaded of error in the Examiner’s findings as to claim 1. Independent claim 27 recites features similar to those recited in independent claim 1. (See App. Br. 8, 13.) Appellants do not argue separately any feature recited in dependent claims 3–11, 13–16, 43, 45, 48, and 52. Accordingly, we sustain the Examiner’s § 102 rejection of claims 1, 3–11, 13–16, 27, 43, 45, 48, and 52. 35 U.S.C. § 103 Rejection of Claim 12 Maintaining Appellants’ arguments with respect to independent claim 1, Appellants further contend the Examiner erred in rejecting claim 12 because Yamaguchi fails to cure the deficiencies of Marler. (See App. Br. 9; Appeal 2012-005407 Application 10/208,810 4 Reply Br. 5.) For the reasons discussed above, we find Appellants’ argument unpersuasive. Accordingly, we sustain the Examiner’s § 103 rejection of claim 12. DECISION The Examiner’s decision rejecting claims 1, 3–11, 13–16, 27, 43, 45, 48, and 52 under 35 U.S.C. § 102(e) is affirmed.1 The Examiner’s decision rejecting claim 12 under 35 U.S.C. § 103(a) 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 gvw 1 We note claim 27 recites “a computer useable medium.” Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent eligible subject matter. See “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining Corps, June 25, 2014.