Ex Parte Kaftan

Patent Trial and Appeal Board

Jun 24, 2014

12397363 (P.T.A.B. Jun. 24, 2014)

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.
12/397,363 03/04/2009 Ilan Kaftan ALU/803724 7995
46363 7590 06/25/2014
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
DUFFIELD, JEREMY S
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
06/25/2014 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 ILAN KAFTAN
____________

Appeal 2012-001940
Application 12/397,363
Technology Center 2400
____________

Before BRUCE R. WINSOR, STANLEY M. WEINBERG, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to the presentation of text-based
advertising for digital television (Spec. 1:5-7).
Claim 1, which is illustrative, reads as follows:
1. A method for use in a digital television (DTV)
system, comprising:
Appeal 2012-001940
Application 12/397,363

2
associating an advertisement with text-based information;
transmitting the advertisement toward one or more set-
top boxes;
transmitting the text-based information toward the one or
more set-top boxes, wherein the text-based information is
adapted to be processed by a closed captioning (CC) system to
provide thereby a text overlay of the advertisement; and
adapting a presentation position of the text-based
information in response to other information being processed
by the CC processing system of a set-top box.
Rejections on Appeal
Claims 1, 4, 5, and 7-9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Blumenschein (US 2010/0175082 A1; July 8,
2010), Saam (US 2003/0106070 A1; June 5, 2003), and Katayama (US
6,912,013 B2; June 28, 2005) (see Ans. 5-8).
Claims 2, 3, and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blumenschein, Saam, Katayama, and Barone, Jr. (US
2002/0075403 A1; June 20, 2002) (see Ans. 8-10).
Claims 10 and 15-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Saam and Katayama (see Ans. 10-14).
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blumenschein and Katayama (see Ans. 14-15).
Claims 11-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Blumenschein, Katayama, and Jagadeesan (US
2006/0075449 A1; Apr. 6, 2006) (see Ans. 15-18).
Appeal 2012-001940
Application 12/397,363

3
Issue on Appeal
Does Katayama teach “adapting a presentation position of the text-
based information in response to other information being processed by the
CC processing system of a set-top box,” as recited in claim 1?

ANALYSIS
We refer herein to Appellant’s Appeal Brief filed October 11, 2011
(“App. Br.”), the Examiner’s Answer mailed October 25, 2011 (“Ans.”), and
Appellant’s Reply Brief filed November 7, 2011 (“Reply Br.”).
With respect to claim 1, Appellant argues Katayama only teaches
determining whether a window already exists at a certain display position,
and thus does not teach adapting a presentation position of the text-based
information in response to other information being processed (App. Br. 9).
Appellant’s argument is not persuasive. As the Examiner explains (Ans. 6,
19), Katayama teaches adjusting a presentation position by determining
which caption to display on top when there are two overlapping captions,
and it does so in response to processing information about the priority of the
captions (Katayama 16:46-17:6). Appellant argues the Specification
indicates the “other information” recited in claim 1 does not encompass
information about another programming or advertising caption (Reply Br. 2-
5). We are not persuaded by this argument either. We agree with the
Examiner (Ans. 21) the phrase “other information” in claim 1, when given
its broadest reasonable interpretation, encompasses information about other
programming or advertising captions. Appellant’s citation to one example in
the Specification where the “other information” is information about
subtitles (Reply Br. 2) does not compel a narrower interpretation.
Appeal 2012-001940
Application 12/397,363

4
Appellant argues Katayama teaches away from adapting a
presentation position of the text-based information in response to other
information being processed by the CC processing system of a set-top box
(App. Br. 9-11). As discussed above, we conclude Katayama teaches the
disputed claim limitation, and thus Appellant’s argument that Katayama
teaches away from the limitation is not persuasive.
Appellant argues it would not have been obvious to one of ordinary
skill in the art at the time of the invention to combine the teachings of
Blumenschein, Saam, and Katayama (App. Br. 12-18; Reply Br. 5-6).
However, Appellant mostly restates the previous argument that Katayama
does not teach adapting a presentation position of the text-based information
in response to other information being processed by the CC processing
system of a set-top box (see, e.g., App. Br. 12 (“the Examiner does not
provide a rationale for the missing claimed features”); id. at 13 (“The
combination of Blumenschein and Saam with Katayama would not be
operable to produce the claimed feature because as shown above: (1) the
cited portions of Katayama do not show . . .”); id. at 18 (“an artisan of
ordinary skill in the art would not be motivated to combine Blumenschein
and Saam with Katayama because the combination does not operate to
produce the claimed features”)). As discussed above, we conclude
Katayama teaches the disputed claim limitation, and thus Appellant’s
arguments are not persuasive.
Appellant argues Blumenschein was filed in 2009 and Saam was filed
in 2002, and “it is doubtful that a piece of software designed in 2009 could
be executed on a processor built in 2002 with the exact same results as if the
same piece of software were executed on a processor built in 2009” (App.
Appeal 2012-001940
Application 12/397,363

5
Br. 15). However, “[t]o justify combining reference teachings in support of
a rejection it is not necessary that a device shown in one reference can be
physically inserted into the device shown in the other.” In re Keller, 642
F.2d 413, 425 (CCPA 1981). “[T]he test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.” Id.
For at least this reason, Appellant’s argument is not persuasive.
Because Appellant’s arguments regarding claim 1 are not persuasive,
we sustain the Examiner’s rejection of claim 1. Appellant presents no
persuasively separate arguments for claims 2-21, and relies on the same
reasons for patentability stated for claim 1 (App. Br. 19-20). As a result, we
also sustain the Examiner’s rejections of claims 2-21.

DECISION
The decision of the Examiner rejecting claims 1-21 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

dw