Ex Parte Houldsworth

Board of Patent Appeals and Interferences

Sep 29, 2010

10218364 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RICHARD J. HOULDSWORTH
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Appeal 2009-006561
Application 10/218,364
Technology Center 2400
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Before KENNETH W. HAIRSTON, JOHN C. MARTIN, and
MARC S. HOFF, Administrative Patent Judges.

HAIRSTON, 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.
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This is an appeal under 35 U.S.C. §§ 6(b) and 134(a) from the final
rejection of claims 1 to 15.
We reverse.
The disclosed invention relates to a method (Figure 2), apparatus
(receiver 10 in Figure 1), and system (Figure 1) for controlling an interactive
application (e.g., typically using JAVA programming script and employed in
a digital television receiver) (Spec. 1:5-32; Abs.). Examples of interactive
applications provided in the Specification by Appellant include two-way
communication for applications concerning betting, shopping, and watching
sports events (e.g., enabling a user to watch a golf tournament and obtain
detailed diagrams of each hole on the course, statistics on the golfers, and/or
a real-time leaderboard) (Spec. 1:19-25). Appellant discloses and claims a
method for controlling an interactive application including (i) receiving a
data stream composed of files and an interactive application, (ii) monitoring
the data stream for a change (e..g., channel change or discontinuity in the
broadcast), and in response to a change (a) preventing file access by the
interactive application, (b) identifying files in the data stream, and (c)
enabling the interactive application to access only files that are identified as
being in the data stream (Abs.; claims 1, 6, and 9).
Claim 1 is representative of the claimed invention, with emphases
added, and reads as follows:
1. A method for controlling an interactive application, comprising:
receiving a data stream that includes an interactive application,
monitoring the data stream to identify a change in the stream, and in
response to the change:
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preventing the interactive application from accessing files,
identifying files present in the data stream, and
enabling the interactive application to access only those files
present in the data stream.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
D’Luna US 2002/0106018 A1 Aug. 8, 2002
(filed Oct. 2, 2001)
Del Sesto US 7,069,571 B1 June 27, 2006
(filed June 15, 1999)
(i) The Examiner rejected claims 1 to 6 and 9 to 13 under 35 U.S.C.
§ 102(e) based upon the teachings of Del Sesto.
(ii) The Examiner rejected claims 7, 8, 14, and 15 under 35 U.S.C.
§ 103(a) based upon the teachings of Del Sesto and D’Luna.
With regard to the anticipation rejection of claims 1 to 6 and 9 to 13,
as well as the obviousness rejection of claims 7, 8, 14, and 15, the Examiner
relies upon Del Sesto as disclosing the data features recited in these claims
of controlling an interactive application including monitoring for a change in
a data stream (e.g., the channel has been changed or a break in the broadcast
occurs) (Ans. 3-9). Specifically, the Examiner finds that Del Sesto discloses
a method and apparatus for monitoring for changes in the data stream, and in
response to a change being identified, preventing an interactive application
from accessing files and enabling the interactive application to access only
those files present in the data stream (Ans. 3-9). The Examiner cites column
9, lines 37 to 50 for the preventing feature and additionally cites column 6,
lines 13 to 58 and column 16, line 35 to column 17, line 10 for the enabling
feature (see Ans. 4-6).
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Appellant argues, inter alia, (App. Br. 6-10; Reply Br. 2-4) that the
applied reference to Del Sesto fails to teach or suggest, in response to
detecting a change in the data stream, (i) preventing the interactive
application from accessing files, (ii) identifying files present in the data
stream, and (iii) enabling the interactive application to access only those files
present in the data stream. More specifically, Appellant argues (App. Br. 6-
9) that Del Sesto’s failure to seek access to a file (at column 9, lines 37 to
50) does not rise to the level recited in claims 1 and 6 of preventing the
interactive application from accessing files. Appellant also argues (App. Br.
6-9) that Del Sesto’s Figure 8, Table 4, and column 16, lines 49 to 60 fail to
disclose enabling the interactive application to access only those files present
in the identified data stream.
The pivotal issue is: Does Del Sesto teach the feature common to
claims 1, 6, and 9 of enabling an interactive application to access only the
files present in the data stream when a change is identified in the data
stream?
Although Del Sesto discloses a method for controlling an interactive
application for use in a broadcast receiver (Abs.; Figs. 7, 8) that is similar to
Appellant’s disclosed invention (Spec. 2:10-3:7), Del Soto’s main purpose is
to detect a channel change and then terminate an interactive application (see
column 1, lines 6 to 14; column 2, lines 30 to 44 and column 5, lines 30 to
35), not to block access to certain files to avoid program failure (due to files
not being present in the data stream) due to a channel change as disclosed by
Appellant (Spec. 2:28-3:7 and 6:18-23). Although Del Sesto detects change
in a data stream, Del Sesto is silent as to preventing access to certain files in
a data stream (as in claims 1 and 6), and doing so while enabling access to
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other files that are present in the data stream (as in claims 1, 6, and 9) in
response to such a detection.
Appellant’s arguments (App. Br. 6-10; Reply Br. 2-4) that Del Sesto
fails to teach or suggest, in response to detecting a change in the data stream,
preventing the interactive application from accessing certain files, and
enabling the interactive application to access only those files present in the
data stream, are convincing. The Examiner has not sufficiently shown how
or why Del Sesto’s disclosure column 9, lines 37 to 50 describes preventing
file access. Instead, we find that this portion of Del Sesto at best discloses
suspending an application (see column 9, lines 42 to 43). Also, the
Examiner has not sufficiently shown how or why Del Sesto’s disclosure at
column 6, lines 13 to 58 and column 16, line 35 to column 17, line 10
describes enabling access to only files present in the data stream. Instead,
we find that these portions of Del Sesto disclose a broadcast receiver 140
and broadcast server 120 that identify interactive applications 170 (column
6, lines 25 to 35), and ignore a detected upstream channel change (column
17, lines 3 to 10) when the upstream channel change detected if the
interactive application 170 is in a protected section (column 16, lines 35 to
39). In other words, Del Sesto’s column 16, line 35 to column 17, line 10
actually indicates that no response is taken (i.e., the interactive application is
not terminated), which means that all files are still accessed or attempted to
be accessed. This is not the same as Appellant’s preventing access to certain
files and enabling access to files present in the data stream which is recited
in independent claims 1, 6, and 9, as well as claims 2 to 5, and 10 to 13
which depend respectively therefrom.
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Based on our findings with respect to Del Sesto, we agree with
Appellant (Reply Br. 4-6) that Del Sesto fails to teach or suggest, in
response to detecting a change in the data stream, (i) preventing the
interactive application from accessing files (as recited in claims 1 and 6),
and (ii) enabling the interactive application to access only those files present
in the data stream (as recited in claims 1, 6, and 9). Therefore, Del Sesto’s
procedure for terminating interactive applications does not anticipate
Appellant’s recited invention set forth in claims 1 to 6 and 9 to 13.
Del Sesto fails to teach the limitation common to each of independent
claims 1, 6, and 9 of enabling an interactive application to access only the
files present in the data stream when a change is identified in the data
stream. It follows that the Examiner has not established anticipation,
because Del Sesto does not disclose each and every limitation of the claimed
invention set forth in independent claims 1, 6, and 9. Atlas Powder Co. v.
IRECO, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d
1475, 1478-79 (Fed. Cir. 1994).
We further find that the Examiner has not established a prima facie
case of obviousness of the claimed subject matter set forth in dependent
claims 7, 8, 14, and 15, since the teachings of D’Luna fail to cure the noted
shortcomings of Del Sesto as set forth above with respect to claims 6 and 9
from which these claims respectively depend. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
In summary, the anticipation rejection of claims 1 to 6 and 9 to 13 is
not sustained because Del Sesto does not teach, at least, enabling the
interactive application to access only those files present in the data stream.
The obviousness rejection of claims 7, 8, 14, and 15 over Del Sesto and
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D’Luna is not sustained because the Examiner’s factual findings and
articulated reasoning concerning the teachings of Del Sesto do not support a
legal conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007).

CONCLUSIONS
Del Sesto does not teach or suggest the feature common to claims 1,
6, and 9 of enabling an interactive application to access only the files present
in the data stream when a change is identified in the data stream.
The Examiner erred in rejecting claims 1 to 6 and 9 to 13 under 35
U.S.C. §102(e).
The Examiner erred in rejecting claims 7, 8, 14, and 15 under 35
U.S.C. §103(a).

ORDER
The Examiner’s decision rejecting claims 1 to 15 is reversed.

REVERSED

KIS

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