Ex Parte Lemmons et al

Board of Patent Appeals and Interferences

Apr 7, 2010

09939306 (B.P.A.I. Apr. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS LEMMONS, IAN ZENONI, THOMAS HUBER,
STEVEN O. MARKEL, MARK MARGARETTEN,
STEVEN REYNOLDS, and JOEL HASSELL
____________
Appeal 2008-004993
Application 09/939,3061
Technology Center 3700
____________
Decided: April 7, 2010
____________

Before JEAN R. HOMERE, STEPHEN C. SIU, and
DEBRA K. STEPHENS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on August 24, 2001. This application claims priority from
provisional application 60/227,994, filed August 25, 2000. The real party in
interest is OpenTV, Inc. (Br. 2.)
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 17 through 54. (Br. 2.)2 Claims 1
through 16 have been cancelled. (Id. at 33-34.) We have jurisdiction under
35 U.S.C. § 6(b) (2008).
We affirm.
Appellants’ Invention
Appellants invented a method and system for playing video games via
interactive television. (Spec. 1, ll. 9-10.) According to Appellants, the
claimed invention is directed to “interactive broadcast games whereby the
participants of the games play directly against each other, the game[s] [are]
broadcast to viewers in addition to participants, and the outcome of the
game[s] [are] determined by the actions of the participants and/or by
computer generated events.” (Id. at 2, ll. 9-12.)
Illustrative Claim
Independent claim 17 further illustrates the invention as follows:
17. A method of implementing an interactive game between at least
two players and viewed by a least one non-participating viewer in an
interactive television broadcast system comprising:
launching said interactive game on a video game server
connected to said television broadcast system that controls play of
said interactive game;
embedding first markup language code in a video broadcast
stream, said first markup language code generated by said video game
server and broadcast to a first set top box at a specific address in said
video broadcast system, said first markup language code comprising a
user interface for a first player of said at least two players;

2 All references to the Appeal Brief are to the Appeal Brief filed on May 18,
2007, which replaced the prior Appeal Brief filed on March 5, 2007.

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embedding second markup language code in said video
broadcast stream; said second markup language code generated by
said video game server and broadcast to a second set top box at
another specific address in said video broadcast system, said second
markup language code comprising a user interface for a second player
of said at least two players;
selecting at least one of the first and second players for said
interactive game based on at least one parameter provided by the first
or second players;
transmitting a game control signal, that is generated in response
to an input from said first player playing said interactive game, and
message data from said first set top box to said video game server;
receiving said game control signal and said message data at said
videogame server;
generating video images in said video game server in response
to said signal;
inserting said video images into said video broadcast stream;
transferring said message data from said video game server to
said second set top box;
and broadcasting said video broadcast stream to a plurality of
set top boxes including set top boxes of said at least two players and
said at least one nonparticipating viewer.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Korilis 6,335,744 B1 Jan. 1, 2002
Lavanchy 6,758,754 B1 Jul. 6, 2004
Eilat WO 99/00163 Jan. 7, 1999

GREENHALGH ET AL., “CREATING A LIVE BROADCAST FROM A
VIRTUAL ENVIRONMENT,” COMPUTER GRAPHICS PROCEEDINGS,
ANNUAL CONFERENCE SERIES (1999) (hereinafter “Greenhalgh”).

“HTML,” available at
http://www.en.wikipedia.org/w/index.php?title=HTML&printable=yes>
(last visited Sept. 27, 2007) (hereinafter “Wikipedia--HTML”).
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Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 17, 19 through 32, and 34 through 43 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Eilat.
Claims 18 and 33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Eilat and Greenhalgh.
Claims 44 through 50 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Eilat and Korilis.
Claims 51 through 53 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Eilat and Lavanchy.
Claim 54 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Eilat, Korilis, and Lavanchy.
Appellants’ Contentions
Appellants contend that Eilat’s disclosure of encoding a first and
second version of a game using a first and second gaming program code
amounts to providing a copy of the game to the first and second participant
and, therefore, does not teach embedding markup language code including a
user interface. (Br. 13-17.) Further, Appellants argue that the Examiner’s
assertion that it is old and well known to embed hypertext markup language
(“HTML”) in a broadcast stream over a network does not remedy the noted
deficiencies of Eilat. (Id. at 17-18.) Additionally, Appellants allege that
Eilat’s disclosure of selecting an avatar does not amount to selecting a user
and, therefore, does not teach “selecting at least one of the first and second
players for said interactive game based on at least one parameter provided
by the first or second player,” as recited in independent claim 17. (Id. at 18-
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19.) Appellants also contend that Eilat’s disclosure of the selection of a
player by an audience member, manager, or using a predetermined criterion
(e.g., such as previous game playing history of the player), teaches the
selection of a player by someone or something other than the player. (Id. at
19-20.)
Examiner’s Findings and Conclusions
The Examiner finds that Appellants failed to properly challenge the
Official Notice in the Non-Final Rejection entered February 25, 2005,
wherein the Examiner asserted that it is old and well known to embed
HTML in a broadcast stream over a network. (Ans. 12.)3 Therefore, the
Examiner finds that Appellants’ failure to seasonally challenge the Official
Notice to be an admission of prior art. (Id.) Further, the Examiner finds that
using markup language, including HTML, lacks criticality in the claimed
invention and amounts to nothing more than an obvious matter of
engineering design choice. (Id. 12-13.) The Examiner also finds that Eilat’s
disclosure of an interface device coupled to a camera, television, and a
network amounts to a vehicle for facilitating access to remotely generated
information and, therefore, teaches the “user interface,” as recited in
independent claim 17. (Id. at 13-14.)
Additionally, the Examiner finds that Eilat’s disclosure of selecting an
interactive player based on a predetermined criterion, such as previous game
playing history of the prospective player, teaches selecting at least one
player for participation in an interactive game whereby the selection is based
on at least one parameter. (Id. 14-15.) In particular, the Examiner finds that

3 All references to the Examiner’s Answer are to the Examiner’s Answer
filed on October 30, 2007, which replaced the prior Examiner’s Answer filed
on September 12, 2007.
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when a player is actively participating in a game, the player is providing
input to the game that determines the player’s performance and, therefore,
teaches a player providing or inputting parameters. (Id. at 15-16.) The
Examiner also find that Eilat’s disclosure of selecting a viewer as a player by
placing a telephone call to the viewer’s residence would require that the
player previously submitted his or her telephone number and, therefore,
amounts to another example of selecting a player based on a parameter
submitted by the player. (Id. at 16.)

II. ISSUE
Have Appellants shown that the Examiner erred in concluding that
Eilat renders independent claim 17 unpatentable? In particular, the issue
turns on whether an ordinarily skilled artisan would have understood that
Eilat teaches:
(a) “embedding first markup language code in a video broadcast
stream…said first markup language code comprising a user interface,” as
recited in independent claim 17;
(b) “embedding second markup language code in said video
broadcast stream…said second markup language code comprising a user
interface,” as recited in independent claim 17; and
(c) “selecting at least one of the first and second players for said
interactive game based on at least one parameter provided by the first or
second players,” as recited in independent claim 17.

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III. FINDINGS OF FACT
The following Findings of Fact (“FF”) are shown by a preponderance
of the evidence.
Eilat
1. Eilat generally relates to interactive audio-visual productions
and, in particular, interactive games and other diversions which are played
via a communication network and with assistance of a television. (1: ll. 3-
5.)
2. Eilat discloses viewing a game played by players at a
multiplicity of viewer units, “including encoding, at a headend, a first
version of the interactive game which includes a first environment by
employing a first gaming program code, and transmitting the first version of
the interactive game to the multiplicity of viewer units…”. (5: l. 26 - 6:
l. 1.) Further, Eilat discloses “encoding, at the headend, a second version of
the interactive game which includes a second environment by employing a
second gaming program code, and transmitting the second version of the
interactive game to the player unit…”. (6: ll. 1-4.) Additionally, Eilat
discloses that “[t]he term ‘gaming program code’ is used throughout
the…specification to refer to a code or any other appropriate method used to
assign one or more destinations to a version associated with the code.” (24:
ll. 22-24.)
3. Eilat discloses “a multiplicity of viewer units, each including a
television and an interface device, which is coupled to the communication
network and is operative to receive, demultiplex and decode the first version
of the interactive game employing the first gaming program code…”. (9: ll.
17-21.) Further, Eilat discloses “a player interface device coupled to a
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player television, and to the communication network, wherein the player
interface device is operative to receive, demultiplex and decode the second
version of the interactive game by employing the second gaming program
code…”. (Id. at ll. 22-25.)
4. Eilat discloses selecting “an interactive player who interactively
participates in the interactive game show.” (19: ll. 1-2.) Eilat discloses that
“[a] player may preferably be selected by an audience that views the game
show, by a manager of the game show, or automatically based on a
predetermined criterion, such as previous game playing history of the viewer
who wishes to be a player.” (Id. at ll. 2-5.)
5. Eilat discloses that “the selection of the viewer as a player may
be performed by placing a telephone call to the viewer’s residence an
informing him of the selection…”. (23: ll. 10-13.)

IV. PRINCIPLES OF LAW
Obviousness
“On appeal to the Board, an applicant can overcome a rejection [under
§ 103] by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)
(citation omitted).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
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In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and discussed circumstances in which a patent might be determined to
be obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 415, 417.
Official Notice
The Examiner may take notice of facts or common knowledge in the
art which are capable of such instant and unquestionable demonstration as to
defy dispute. In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970). If
Appellants fail to challenge the Examiner's notice and it is clear that he has
been given ample opportunity to make such challenge, the Examiner's
finding will be considered conclusive. Id. 1091-92, 165. To challenge the
Examiner's notice, Appellants must present evidence to the contrary. In re
Knapp-Monarch Co. 296 F.2d 230, 232 (CCPA 1961) (considering
challenge to taking of judicial notice by Trademark Trial and Appeal Board).

V. ANALYSIS
Claim 17
Independent claim 17 recites, in relevant part,
1) embedding first markup language code in a video broadcast
stream…said first markup language code comprising a user interface;
2) embedding second markup language code in said video broadcast
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stream…said second markup language code comprising a user
interface; and 3) selecting at least one of the first and second players
for said interactive game based on at least one parameter provided by
the first or second players.

As detailed in the Findings of Fact section, Eilat discloses playing
interactive video games over a communication network utilizing a
television. (FF 1.) In particular, Eilat discloses that both a first and second
player employ a gaming program code in order to interact with a game via
player interface devices coupled to their respective televisions. (FF 2-3.)
Further, Eilat discloses that the gaming program code may be any code or
other appropriate method used to assign one or more destinations to a
version of the game being played. (FF 2.) We find that Eilat’s disclosure
teaches that multiple players are capable of playing an interactive video
game utilizing a user interface device coupled to a television, whereby each
player employs gaming program code corresponding to the version of the
game being played in order to interact with the respective game.
Next, MPEP § 2144.03(C) provides the requirements to traverse
Official Notice: [S]pecifically point out the supposed errors in the
[E]xaminer's action, which would include stating why the noticed fact is not
considered to be common knowledge or well-known in the art.” See 37
C.F.R. 1.111(b) (2005). See also In re Chevenard, 139 F.2d 711, 713
(CCPA 1943). We find that Appellants have failed to adequately traverse
the Examiner's Official Notice that it is old and well known to embed
HTML in a broadcast stream over a network. In particular, Appellants have
failed to provide evidence to dispel the Examiner's finding that the noticed
fact is not considered to be common knowledge or well known in the art.
Therefore, since Appellants were given ample opportunity to challenge the
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Examiner’s Official Notice in the Non-Final Rejection entered February 25,
2005, and, further, failed to set forth such a challenge, we find that
embedding HTML in a broadcast stream over a network is admitted prior
art.
Further, Eilat discloses selecting a player to participate in an
interactive game based on a predetermined criterion, such as the prospective
player’s previous game playing history. (FF 4.) We find that Eilat’s
disclosure teaches selecting a player for an interactive game based on at least
one parameter. As set forth above, Eilat’s disclosure teaches that multiple
players are capable of playing an interactive video game utilizing a user
interface device coupled to a television. In particular, we find that an
ordinarily skilled artisan would have readily appreciated that when a player
actively participates in a game, the player utilizes a user interface device to
provide input to the game which dictates the player’s actions and, thereby,
creates a record or history of the player’s performance. Thus, we find the
Eilat’s disclosure of selecting a player for an interactive game based on at
least one parameter, in conjunction with the player actively participating in a
game by providing input which creates a performance record or history,
amounts to selecting a player for an interactive game based on at least one
parameter provided by the player. Thus, we find the Eilat teaches “selecting
at least one of the first and second players for said interactive game based on
at least one parameter provided by the first or second players,” as recited in
independent claim 17.
Alternatively, Eilat discloses selecting a player to participate in an
interactive game by placing a telephone calling to the prospective player at
his or her residence. (FF 5.) We find that Eilat’s disclosure teaches
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selecting a player for an interactive game by calling the prospective player at
his or her residence. In particular, we agree with the Examiner that an
ordinarily skilled artisan would have understood that the selection of a
prospective player by telephone requires that the player previously submitted
his or her telephone number. (Ans. 16.) Thus, we find that the submission
of a prospective player’s telephone number and the player’s subsequent
selection amounts to selecting a player based on a parameter submitted by
the player. It follows that Appellants have not shown that the Examiner
erred in concluding that Eilat renders independent claim 17 unpatentable.
Claims 18 through 54
Appellants do not provide separate arguments for patentability with
respect to independent claims 27, 39, and 44, and dependent claims 18
through 26, 28 through 38, 40 through 43, and 45 through 54. Therefore, we
select independent claim 17 as representative of the cited claims.
Consequently, Appellants have not shown error in the Examiner’s rejection
of independent claims 27, 39, and 44, and dependent claims 18 through 26,
28 through 38, 40 through 43, and 45 through 54, for the reasons set forth in
our discussion of independent claim 17. 37 C.F.R. § 41.37(c)(1)(vii).

VI. CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
17 through 54 as being unpatentable under 35 U.S.C. § 103(a).

VII. DECISION
We affirm the Examiner’s decision to reject claims 17 through 54.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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SCHWEGMAN, LUNDBERG & WOESSNER/OPEN TV
P.O. BOX 2938
MINNEAPOLIS, MN 55402-0938