Ex Parte Larson et al

Patent Trial and Appeal Board

Mar 10, 2014

11272586 (P.T.A.B. Mar. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID ANTHONY LARSON, BRYAN MARK LOGAN,
and TERRENCE THEODORE NIXA
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Appeal 2011-011152
Application 11/272,586
Technology Center 2600
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Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and
JOHNNY A. KUMAR, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner
finally rejecting claims 1, 4-12, and 15-18, all the claims pending in the
application. Claims 2, 3, 13, 14, 19, and 20 are cancelled. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to alternative audio for a
program presented via a digital video recorder. Spec. 1:5-6.
Claim 1 is illustrative:
1. A method comprising;
creating an alternative audio file for a program, wherein
the alternative audio file comprises a plurality of alternative audio
segments, wherein the plurality of alternative audio segments
comprise signals representing sounds;
embedding a first plurality of markers among the
plurality of alternative audio segments in the alternative audio file,
wherein each of the first plurality of markers is associated with a
respective one of the plurality of alternative audio segments, wherein
the first plurality of markers identify a plurality of original closed
caption data segments in the program, wherein the first plurality of
markers point to the plurality of original closed caption data segments
that comprise text;
sending the alternative audio file to a client, wherein the
client receives the program from a content provider, matches the first
plurality of markers to the original closed caption data segments, and
substitutes the alternative audio segments for the original audio
segments in presentation of the program via the matches;
creating alternative content comprising a plurality of
alternative audio and video segments, wherein the plurality of
alternative audio and video segments comprise signals representing
sounds;
embedding a second plurality of markers among the
plurality of alternative audio and video segments in the alternative
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content, wherein each of the second plurality of markers is associated
with a respective one of the plurality of alternative audio and video
segments, wherein the second plurality of markers identify the
plurality of original closed caption data segments in the program; and
sending the alternative content to the client, wherein the
client matches the second plurality of markers to the original closed
caption data segments, and substitutes the alternative audio and video
segments for the original closed caption data segments via the
matches in presentation of the program.

Appellants appeal the following rejections:
R1. Claims 6, 7, 11, 12, 17, and 18 are rejected under 35 U.S.C.
§112, 1st paragraph, as failing to comply with the written description
requirement; and
R2. Claims 1, 4-12, and 15-18 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Li (US Patent Pub. 2001/0044726 A1, Nov. 22,
2001), Peliotis (US Patent Pub. 2002/0065678 A1, May 30, 2002), and Gee
(US Patent Pub. 2004/0049780 A1, Mar. 11, 2004).

Claim Groupings
Based on Appellants’ arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1 and 6, as set forth below. See 37 C.F.R.
41.37(c)(1)(vii).

ANALYSIS
Rejection under § 112, 1st paragraph, of Claims 6, 7, 11, 12, 17, and 18
Issue 1: Did the Examiner err in finding that the claims fail to comply
with the written description requirement?
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Appellants contend the Specification “describes three different
pluralities of markers (in the alternative audio 274 of Fig. 5B, in the
alternative content 278 of Fig. 5C, and in the alternative closed caption data
276 of Fig. 5B)” (App. Br. 23).
The Examiner finds that “the passages referred to by [A]ppellant[s]
disclose the same markers A550-1, B550-2, and C550-3 and not a third or
three different pluralities of markers” (Ans. 22-23). We disagree with the
Examiner.
In Appellants’ Figures 5B and 5C, the reference numbers “550-1, 550-
2, and 550-3” are used to illustrate MARK A, MARK B, and MARK C,
respectively, for each of ALTERNATIVE AUDIO, ALTERNATIVE CC,
and ALTERNATIVE CONTENT. In other words, Appellants’ drawings
illustrate three different types of alternative data, each having associated
markers. While the markers for the three types of data are shown with the
same reference numbers, they represent three different types of markers sets.
In order to satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that inventor actually invented the invention claimed.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. (citations omitted). One shows possession “by such descriptive means as
words, structure, figures, diagrams, formulas, etc., that fully set forth the
claimed invention.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572
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(Fed. Cir. 1997). Here, we find that the drawings clearing illustrate three
different types of markers for three different types of data.
We therefore cannot sustain the Examiner’s § 112, 1st paragraph,
rejection of claims 6, 7, 11, 12, 17, and 18.

Rejection under § 103(a) of Claims 1, 4-12, and 15-18
Issue 2: Did the Examiner err in combining Li, Peliotis, and Gee?
Appellants contend that “Li uses time stamps and marker codes,
which do not ‘point to the plurality of original closed caption data segments
that comprise text,’ as recited in claim 1” (App. Br. 24). Appellants further
contend that each of Li, Gee, and Peliotis “teaches away from” the
substitution of data (id. at 24-25). We disagree with Appellants.
We refer to, rely on, and adopt the Examiner's findings and
conclusions set forth in the Answer (see Ans. 23-34). Our discussions here
will be limited to the following points of emphasis.
Appellants’ invention relates to creating alternative audio for a
program and embedding markers in the alternative audio file (see claim 1).
Similarly, Li discloses providing audio translation data whereby a “user can
watch the movie with audio signals and/or subtitles corresponding to the
language preferred by him” (¶ [0037]). In Li, “resynchronization marker
codes . . . are inserted in the video data stream at certain intervals” (¶
[0039]). Peliotis also discloses “placing markers in the video stream” (¶
[0008]), and “inserting alternate video segments that replace video segments
that have been excluded by the viewer” (id.). Finally, Gee discloses a
method for marking portions of the program and selective replacement of
both audio and video content (see ¶ [0017]) and that “[t]he closed caption
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corresponding to the portion of the audio containing the objectionable
content may also be replaced” (¶ [0029]).
In other words, the combined teachings of Li, Peliotis, and Gee teach
providing alternative content, i.e., audio, video, and closed caption, and
markers identifying the same. As a result, we do not find, and Appellants
have not establish, that Li, Peliotis, and/or Gee criticizes, discredits, or
otherwise discourages substituting data. “A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, . . . would
be led in a direction divergent from the path that was taken by the
app[ellants].” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (citation
omitted). We do not find this to be the situation before this Board.
Based on the record before us, we find that the Examiner did not err in
rejecting claim 1, and claims 4-12 and 15-18, which were not separately
argued. Accordingly, we affirm the rejections of claims 1, 4-12, and 15-18.

DECISION
We affirm the Examiner’s § 103 rejection of claims 1, 4-12, and 15-
18.
We reverse the Examiner’s § 112, 1st paragraph, rejection of claims 6,
7, 11, 12, 17, and 18.
Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is affirmed. All claims on appeal are
unpatentable.
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

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