Ex Parte Levy et al

Board of Patent Appeals and Interferences

May 25, 2012

10804581 (B.P.A.I. May. 25, 2012)

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.
10/804,581 03/18/2004 Kenneth L. Levy P0956 7267
23735 7590 05/29/2012
DIGIMARC CORPORATION
9405 SW GEMINI DRIVE
BEAVERTON, OR 97008
EXAMINER
STRONCZER, RYAN S
ART UNIT PAPER NUMBER
2425
MAIL DATE DELIVERY MODE
05/29/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KENNETH L. LEVY and REED R. STAGER
____________________

Appeal 2010-002131
Application 10/804,581
Technology Center 2400
____________________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002131
Application 10/804,581

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm-in-part.

The claims are directed to synchronizing broadcast content with
corresponding network content, such as HTML content on a web site.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of synchronizing broadcast content with
dynamic network content at a network address, the method
comprising:

extracting an identifier embedded in broadcast content;

using the identifier to identify corresponding network
content; and

after the corresponding network content thereby has been
identified, posting the corresponding network content on a
network device located at the network address, the network
device being responsive to requests sent to the network address
to provide the network content over a network; wherein the
broadcast content is synchronized with the corresponding
network content.
(disputed limitations emphasized added).

REJECTIONS
Claims 1, 2, 5-8, 11-16, 18, 20-24, and 26-29 stand rejected under 35
U.S.C §103(a) as being unpatentable over Ullman (U.S. Patent No.
6,018,768) and Carro (U.S. Patent Application Pub. No. 2004/0139474 A1).
Appeal 2010-002131
Application 10/804,581

3
Claims 3, 4, 9, 10, 19, and 25 stand rejected under 35 U.S.C §103(a)
as being unpatentable over Ullman, Carro, and Levy (U.S. Patent
Application Pub. No. 2002/0162118 A1).
Claim 17 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Ullman, Carro, Levy, and Linnartz (U.S. Patent
Application Pub. No. 2002/0152388 A1).

Independent Claim 1
Contentions
Regarding independent claim 1, Appellants present the following
principal argument:
The combined teachings of Ullman and Carro fail to suggest
this method of synchronizing broadcast content with dynamic
network content at a network address because they lack the act
of synchronizing by posting the identified network content to
the network device, which is then responsive to request for this
content via the network. Indeed, with no act of posting the
identified network content to a network device at the network
address, there is no such notion of synchronizing broadcast and
network content in the combined teachings of Ullman and
Carro. Ullman and Carro simply teach ways of looking up
network content relating to a video broadcast. Ullman uses a
direct look up method using URL codes decoded from the
Vertical Blanking Interval of video, while Carro uses an
indirect look up using time and channel information to look up
corresponding URLs. These references fail to teach a
synchronization method as claimed because they do not suggest
posting the identified network content on a network device
located at the network address, which is then responsive to
requests for that posted network content.

(App. Br. 9-10, emphasis and underline added).

Appeal 2010-002131
Application 10/804,581

4
In support, Appellants point to, inter alia, Figures 1-6, and paragraphs
[0172-0182 and 0185-0190] of Carro. (App. Br. 10-11).
The Examiner disagrees:
[Al]though Ullman discloses synchronizing video content with
corresponding network content, Ullman does not explicitly
disclose “posting said content to a network device.” Fig. 8 of
Carro, as cited above, discloses an analogous method of
synchronizing video content with corresponding network
content in which the URLs corresponding to the network
content are posted to a website that a user can reference. The
Examiner maintains that one of ordinary skill in the art at the
time of the invention would recognize that the combined
teachings of Ullman and Carro, when considered as a whole,
teach a system in which network content (the embedded URLs)
are posted to a network device (the Internet server hosting the
URL table of Fig, 8 of Carro) simultaneously with the delivery
of the corresponding network content to the user in a manner
equivalent to that of the claimed method.

(Ans. 13-14, emphasis and underline added).

Issue – Independent Claim 1
Under § 103, did the Examiner err in finding that the
cited references, either alone or in combination, would have
taught or suggested the following limitations:
after the corresponding network content thereby has been
identified, posting the corresponding network content on a
network device located at the network address, the network
device being responsive to requests sent to the network address
to provide the network content over a network; wherein the
broadcast content is synchronized with the corresponding
network content,

within the meaning of claim 1? (emphasis added).

Appeal 2010-002131
Application 10/804,581

5
ANALYSIS
At the outset, we accord no weight to the particular content of the
claimed “network content” as such content (e.g., a web site display
associated with broadcast content) is directed to non-functional descriptive
material that is not positively recited as changing or altering any machine or
computer function.1 However, under a broad but reasonable construction of
claim 1, regardless of the particular content (or type) of the claimed
“network content,” it must correspond to the extracted identifier that
identifies it, as required by the express claim language, and the
corresponding network content must be posted after the network content has
been identified, and such network content must be provided over a network
responsive to requests sent to the network address.2
The Examiner finds that the extracted identifiers (embedded in the
broadcast content) of claim 1 are taught or suggested by Ullman’s teaching
of embedded URL codes that are extracted from the video signal by server
URL decoder 24 (Ans. 3-4; Ullman, Fig. 2., col. 5, ll. 62-67). In particular,
see Ullman at column 5, line 64: “When the decoder 24 receives the video
program signal, it strips out the URL codes . . . .” (emphasis added). Thus,
in the primary Ullman reference, the corresponding network content (e.g.,

1 See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008)
(precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative)
(Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex
parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed.
Appx. 959 (Fed. Cir. 2006).

2 Assuming that the claimed “identifier” is a network address (e.g., a URL
representation of a network address), we conclude that the broad language of
claim 1 does not preclude the recited “identifier” and the recited “network
address” from being the same address. (Claim 1).
Appeal 2010-002131
Application 10/804,581

6
website content) is pointed to by URLs (identifiers) extracted from the
video, where each URL corresponds to a network address. (See Ullman,
Fig. 2, “Server URL Decoder 24”). We find no error in this portion of the
Examiner’s rejection of claim 1.
However, we agree with Appellants that each extracted URL in the
Examiner’s proffered combination cannot reasonably be both the claimed
extracted identifier and the corresponding network content, within the
meaning of claim 1:
In the Office’s interpretation, the URLs in Ullman correspond
to the claimed identifiers, yet in Carro, the URLs are the
claimed “corresponding network content.” Thus, for the
Office’s interpretation to hold, one of skill would have to
interpret the URLs as two different claim elements, whereas
they perform the same function in both prior art references.

(Reply Br. 4, para. 1).
The Examiner expressly finds that the secondary Carro reference
teaches “URLs corresponding to the network content are posted to a website
that a user can reference.” (Ans. 13, last paragraph). Thus, we agree with
Appellants that the Examiner improperly reads both the claimed extracted
“identifier” and the claimed “corresponding network content” on the URLs
in the cited combination of references. (Ans. 4, 13, see 14, 3rd line from
page bottom: “network content (the URLs) is synchronized”).
Further, in responding to arguments regarding the rejection of
associated dependent claim 5, the Examiner’s also finds that Ullman’s URLs
are posted:
With respect to the embodiment disclosed in Fig. 2, Ullman, as
cited above, explicitly teaches that the Server URL Decoder 24
Appeal 2010-002131
Application 10/804,581

7
automatically detects and strips the embedded URLs from the
video signal and posts said stripped URLs to Internet server 28
(col. 5/62-col.6/4)
(Ans. 15, para. 2, emphasis added). 3
Thus, the Examiner reaffirms that it is the URLs (extracted identifiers)
that are posted in the cited combination, and not the network content
corresponding to the extracted identifiers (URLs), as required by the
language of claim 1. Moreover, claim 1 expressly recites a temporal
limitation: “after the corresponding network content thereby has been
identified, posting the corresponding network content on a network device
located at the network address . . . .” (emphasis added).
Since the Examiner also relies on Ullman (Fig. 2), for teaching
extracting the URLs (identifiers) from the video signal (Ans. 4, l. 3), at best,
the Examiner’s proffered combination teaches posting the extracted
identifiers (URLs) on a network device (Carro, Fig. 8), instead of posting the
claimed “corresponding network content” after extracting the identifier, as
required by claim 1. We particularly emphasize the temporal limitation
“after” that is recited in claim 1, because such temporal limitation is not
recited in broader independent claim 24, discussed infra.
For essentially the same reasons argued by Appellants in the Briefs
(App. Br. 9-12; Reply Br. 2-3), as discussed above, we reverse Examiner’s

3 The Examiner findings regarding claim 1 appear to directly contradict the
Examiner’s findings regarding dependent claim 5. In the rejection of claim
1, the Examiner finds that Ullman “does not explicitly teach that said
network content [is] ‘posted’ to the server, as claimed.” (Ans. 4, ll. 11-12).
We note that claim 5 recites “wherein the identifier triggers automatic
posting of the corresponding network content.” (emphasis added).
Appeal 2010-002131
Application 10/804,581

8
obviousness rejection of independent claim 1, and also the obviousness
rejections of associated dependent claims 2-23.

Independent Claim 24
For convenience, we reproduce claim 24:
24. A system for synchronizing web content accessed at a
URL with broadcast content, the system comprising:

a database associating web content identifiers with
corresponding web content relating to items that are subjects of
broadcast programming;

an embedder for embedding the web content identifiers into
broadcast programs, the embedder using the items that are subjects of
the broadcast programming to select web content identifiers for
embedding into the broadcast programming; and

a web site control operative to extract the web content
identifiers and ensure that the corresponding web content is posted at
said URL when corresponding broadcast programming is broadcast.

Appellants present the following contentions:
Regarding claim 24, the contention that the web site
control is inherent in “extracting the URL from the video
broadcast and updating universal time table 701 of Carro” is
erroneous because Carro does not extract URLs [from] the
video broadcast. The Office cannot base an inherency
argument based on the disparate teachings of different
references. Moreover, as explained above, the updating of the
universal time table 701 is performed on the user device in
Carro and does not involve posting web content at said URL
when corresponding content is broadcast. Therefore, the Office
has cited Carro as teaching posting of web content, which it
does not teach in the manner claimed.
(App. Br. 14).
Appeal 2010-002131
Application 10/804,581

9
The Examiner disagrees:
With respect to claim 24, the Examiner maintains that
Carro, as cited in the rejection teaches the recited database.
Carro teaches that the channel information server “searches
into its database the hyperlinks GPS-time intervals 1103 and
identifies the hyperlinks 1104 and 1105 associated with
selected GPS-times” [0108]. As to the recited embedder for
embedding web content identifiers into broadcast programs, as
Ullman teaches that the Server URL Decoder extracts web site
identifiers from the received video feed, said identifiers used to
synchronize the identified web content with the video program,
the Examiner maintains that the recited embedder is inherent in
producing the video program with the embedded URLs taught
by Ullman. Further, as the combined teachings of Ullman and
Carro teach that the website 802 taught by Fig. 8 of Carro is
updated as the URLs are decoded, the Examiner maintains that
the recited “website control” is inherent in performing said
updating of the website taught by Carro.
(Ans. 17-18).
In contrast to claim 1 discussed above, we conclude that the scope of
claim 24 is significantly broader than claim 1. In particular, claim 24 is
silent regarding the temporal limitation of “after the corresponding network
content thereby has been identified, posting the corresponding network
content on a network device” (claim 1) (emphasis added). Instead, claim 24
more broadly recites:
a web site control operative to extract the web content
identifiers and ensure that the corresponding web content is
posted at said URL when corresponding broadcast
programming is broadcast.
(Claim 24) (emphasis added).
We also conclude that under a broad but reasonable construction the
language of claim 24 does not preclude retrieving previously posted web
Appeal 2010-002131
Application 10/804,581

10
content.4 Appellants also expressly acknowledge that “[t]here is no dispute
that both Ullman and Carro teach retrieving and displaying web page content
that is related to a video broadcast.” (Reply Br. 2, para. 2, lines 2-3).
Given the broader scope of claim 24, we find the weight of the
evidence supports the Examiner’s underlying factual findings and ultimate
legal conclusion of obviousness. Although the respective Ullman and Carro
references retrieve previously posted content using different approaches, we
agree with the Examiner that in each reference the retrieved URLs must
necessarily (i.e., inherently) point to the corresponding web content that also
corresponds to the broadcast programing. “The inherent teaching of a prior
art reference, a question of fact, arises both in the context of anticipation and
obviousness.” In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (affirmed 35
U.S.C. § 103 rejection based in part on inherent disclosure in one of the
references) (citation omitted).
We also agree with the Examiner’s finding that the detailed
description of Carro’s database (para. [0108]) would have taught or
suggested the first claim limitation:
a database associating web content identifiers with
corresponding web content relating to items that are subjects of
broadcast programming;

(Claim 24).

4 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004)).
Appeal 2010-002131
Application 10/804,581

11
Further, we agree with the Examiner’s finding that the URL encoder
and associated URL decoder shown in Ullman’s Figure 2 would have taught
or suggested the second claim limitation:
an embedder for embedding the web content identifiers
into broadcast programs, the embedder using the items that are
subjects of the broadcast programming to select web content
identifiers for embedding into the broadcast programming;

(Claim 24).

See Ullman’s “URL encoder 8” (Fig. 2). Ullman also teaches that
“[t]he local URL decoder 12 extracts the URLs, preferably embedded in the
[video] vertical blanking interval, with the use of any conventional VBI
decoder device.” (Ullman, col. 5, ll. 51-53).
For essentially the same reasons articulated by the Examiner in the
Answer (17-18), as discussed above, we sustain the obviousness rejection of
claim 24 over the combination of Ullman and Carro.

Dependent claims 26-29
We find Appellants’ arguments unpersuasive regarding dependent
claims 26-29. We have addressed the inherency issue supra regarding claim
24. We also conclude that the language of independent claim 24 and
associated dependent claims 26-29 does not preclude retrieving previously
posted web content (i.e., content posted before the broadcast programming is
broadcast), under a broad but reasonable construction. Therefore, we also
sustain the obviousness rejection of dependent claims 26-29 over the
combination of Ullman and Carro.

Appeal 2010-002131
Application 10/804,581

12
Dependent claim 25
Claim 25 depends directly from claim 24. For convenience, we
reproduce claim 25:
25. The system of claim 24 wherein the embedder
comprises a digital watermark embedder for modifying audio or
video signals of a broadcast program to encode the identifiers in
a substantially imperceptible manner in the audio or video
signals.

Appellants contend:
The Office correctly notes that Levy teaches applications
of watermarking in TV signals. Levy does not teach the
claimed aspects of synchronizing broadcast and network
content that are missing from Ullmam and Carro as noted
above, nor does it suggest such an application for digital
watermarking.
(App. Br. 14).
For the reasons discussed above regarding independent claim 24, we
find no deficiencies with Ullman and Carro regarding the disputed claimed
aspects of synchronizing broadcast and network content, that are covered by
independent claim 24, from which claim 25 depends.
Regarding the disputed digital watermark, we find the evidence
supports the Examiner’s finding:
Levy explicitly states, “[t]he present invention relates to using
content identifiers with interactive television systems, and is
particularly illustrated in the context of digital watermarking”
([0003], emphasis added).
(Ans. 18; Levy, para. [0003]).
We note that the Examiner’s rejection is based on the combined
teachings and suggestions of the cited references. For these reasons, we
Appeal 2010-002131
Application 10/804,581

13
sustain the obviousness rejection of dependent claim 25 over the
combination of Ullman, Carro, and Levy.

DECISION
We reverse the Examiner’s rejections under § 103 of claims 1-23.
We affirm the Examiner’s rejections under § 103 of claims 24-29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

ORDER
AFFIRMED-IN-PART

llw