Ex Parte Levy et al

Board of Patent Appeals and Interferences

Jul 16, 2012

09952475 (B.P.A.I. Jul. 16, 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.
09/952,475 09/11/2001 Kenneth L. Levy 098888-1639 6282
99103 7590 07/17/2012
Foley & Lardner LLP
150 EAST GILMAN STREET
P.O. BOX 1497
MADISON, WI 53701-1497
EXAMINER
TIV, BACKHEAN
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
07/17/2012 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, GEOFFREY B. RHOADS,
REED R. STAGER, and TONY F. RODRIGUEZ
____________
Appeal 2010-002484
Application 09/952,475
Technology Center 2400
____________

Before ALLEN R. MacDONALD, KALYAN K. DESHPANDE, and
MICHAEL R. ZECHER, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1-20. App. Br. 2.1 We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.
Appellants’ Invention
Appellants invented a method for connecting multimedia content to a
network resource. According to Appellants, the claimed invention extracts
an identifier from a media signal, sends the identifier to a network along
with context information indicating device type information, receives related
data associated with the medial signal via the identifier, and adapts the
network connected device based on the device type information. See
Abstract.

Illustrative Claims
1. A method of connecting multimedia content to a
network resource comprising:
in a network connected device, extracting an identifier
from a media signal;
sending the identifier to a network along with context
information indicating device type information, where the
identifier is used to look up related data for the media signal;
from the network, receiving the related data associated
with the media signal via the identifier, where a format of the
related data is adapted to the network connected device based
on the device type information.

1 All references to the Appeal Brief are to Appeal Brief filed June 22, 2009.
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9. A method comprising:
in a network connected device, extracting an identifier
from a media signal;
sending the identifier to a network along with context
information, where the identifier and context information is
used to look up related data for the media signal;
from the network, receiving the related data associated
with the media signal via the identifier and context information,
wherein the related data includes usage rights and the usage of
the media signal in the network connected device is controlled
via the usage rights.

Related Appeal
This appeal is said to be related to Application No. 09/636,102
(Appeal No. 2006-1345). App. Br. 2.
Prior Art Relied Upon
Zhao US 6,141,753 Oct. 31, 2000
(filed Feb. 10, 1998)
Gruse US 6,389,538 B1 May 14, 2002
(effectively filed Aug. 13, 1998)
Belknap US 6,516,356 B1 Feb. 4, 2003
(filed Sept. 30, 1997)
Iwamura US 6,560,339 B1 May 6, 2003
(effectively filed Feb. 17, 1998)

Rejections on Appeal
Claims 1, 4, 5, 7, 9, 11, 13, 15, 17, and 19 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Zhao and
Belknap. Ans. 3-5.
Claims 2, 3, 8, 10, 12, 16, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Zhao, Belknap, and
Gruse. Ans. 5-8.
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Claims 6, 14, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Zhao, Belknap, and Iwamura. Ans. 8.

Examiner’s Findings and Conclusions
1. The Examiner finds that Belknap’s media objects, such as audio
or video based files, teach or suggest context information indicating device
type information, as required by independent claim 1. Ans. 9. Moreover,
the Examiner finds that depending on Belknap’s type of media object, the
video display may be a television, broadcast monitor, or a computer monitor
including a cathode ray tube or flat display. Ans. 10. Therefore, the
Examiner finds that Belknap teaches or suggests adapting a format of the
related data to the network connected device based on the device type
information, as claimed. See Ans. 9-10.
2. The Examiner finds that Zhao’s watermark key, in conjunction
with using information about an author (“use information”) to watermark a
work, teaches or suggests using an identifier and context information to look
up or identify usage rights for a media signal, as required by independent
claims 9 and 15. See Ans. 15-18.
Appellants’ Contentions
1. Appellants contend that Belknap’s type of media object does
not teach or suggest context information that indicates that device type
information, as required by independent claim 1. App. Br. 6; Reply Br. 3.
In particular, Appellants argue that since many different types of devices can
process audio and video based files, Belknap’s type of media object does not
teach or suggest the context information indicating device type information,
as claimed. Id.
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2. Appellants contend that Zhao’s watermarking process does not
teach or suggest receiving usage rights from a network using an identifier
extracted from the media signal, and controlling usage of the media signal
via the usage rights, as required by independent claims 9 and 15. App. Br. 9;
Reply Br. 6. In particular, Appellants argue that Zhao’s watermarking
process relates to the insertion of information in the work—not the
extraction. Reply Br. 6. Appellants also assert that Zhao’s insertion process
does not teach or suggest looking up usage rights, let alone controlling usage
of the media signal, as claimed. Id.

II. ISSUES
1. Did the Examiner err in finding that the combination of
Zhao and Belknap teaches or suggests “sending the identifier to a
network along with context information indicating device type
information [. . .] where a format of the related data is adapted to the
network connected device based on the device type information[,]” as
recited in independent claim 1?
2. Did the Examiner err in finding that the combination of Zhao
and Belknap teaches or suggests “where the identifier and context
information is used to look up related data for the media signal [. . .] the
related data includes usage rights and the usage of the media signal in the
network connected device is controlled via the usage rights[,]” as recited in
independent claim 9, and similarly recited in independent claim 15?

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III. ANALYSIS
35 U.S.C. § 103(a) Rejection—Combination of Zhao and Belknap
Claim 1
Based on the record before us, we find error in the Examiner’s
obviousness rejection of independent claim 1, which recites, inter alia,
“sending the identifier to a network along with context information
indicating device type information [. . .] where a format of the related data is
adapted to the network connected device based on the device type
information.”
At best, we find that Belknap discloses using an identifier in a request
to retrieve or update a particular media object to identify a specific type of
media file, such as an audio or video based file. Col. 6, l. 52-col. 7, l. 4.
However, we agree with Appellants that while Belknap’s type of media
object may amount to context information, it does not indicate device type
information used to format data to a network connected device, as claimed.
See App. Br. 6; Reply Br. 3. That is, since Belknap is silent with regards to
the specific types of devices that are capable of processing the selected audio
or video based file, Belknap does not convey the applicable format used to
adapt the corresponding multimedia data to a network connected device.
Thus, we find that the Examiner improperly relied upon Belknap to teach or
suggest the disputed claim limitation. Further, we find that Zhao does not
remedy the above-noted deficiency in the Examiner’s obviousness rejection.
Since Appellants have shown at least one error in the rejection of
independent claim 1, we need not reach the merits of Appellants’ other
arguments. It follows that the Examiner has erred in concluding that the
combination of Zhao and Belknap renders independent claim 1 unpatentable.
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Claims 4, 5, and 72
Since dependent claims 4, 5, and 7 incorporate by reference the same
disputed claim limitation as their underlying base claim, we find that the
Examiner erred in rejecting these claims for the same reason set forth in our
discussion of independent claim 1.
Claims 9 and 15
Based on the record before us, we find error in the Examiner’s
obviousness rejection of independent claim 9, which recites, inter alia,
“where the identifier and context information is used to look up related data
for the media signal [. . .] the related data includes usage rights and the usage
of the media signal in the network connected device is controlled via the
usage rights.” Claim 15 recites a similar claim limitation.
At best, we find that Zhao discloses associating each watermarked
work with use information that indicates how the respective work may be
used. Col. 4, ll. 7-18. However, we find that Zhao does not contemplate
using both the watermark and use information to identify usage rights for a
work. That is, we find that the Examiner’s stated position that Zhao uses
both the watermark key and information about the author to look up or
identify usage rights for a work unreasonable given that Zhao already
discloses associating such information with the work. See Ans. 15-18. Put
another way, it is not apparent to us why an ordinarily skilled artisan would

2 Appellants contend that the Examiner introduces a new ground of rejection
with respect to dependent claim 7 because the Examiner applies the Iwamura
reference for the first time in the Final Rejection. See App. Br. 8. However,
we find Appellants’ contention is rendered moot because, as discussed
supra, the Examiner improperly relied upon the combination of Zhao and
Belknap to teach or suggest the disputed claim limitation recited in
independent claim 1, from which claim 7 dependents.
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use both Zhao’s watermark key and information about the author to look up
or identify usage rights for a work, especially considering that such rights
have already been identified by the use information associated with the work
during the watermarking process. Thus, we find that the Examiner
improperly relied upon Zhao to teach or suggest the disputed claim
limitation. Further, we find that Belknap does not remedy the above-noted
deficiency in the Examiner’s obviousness rejection. It follows that the
Examiner has erred in concluding that the combination of Zhao and Belknap
renders independent claims 9 and 15 unpatentable.
Claims 11, 13, 17, and 19
Since dependent claims 11, 13, 17, and 19 incorporate by reference
the same disputed claim limitation as their underlying base claim, we find
that the Examiner erred in rejecting these claims for the same reason set
forth in our discussion of independent claims 9 and 15.
Remaining 35 U.S.C. § 103(a) Rejections
Claims 2, 3, 6, 8, 10, 12, 14, 16, 18, 20
We find that neither Gruse nor Iwamura remedy the above-noted
deficiency in the Examiner’s obviousness rejection of independent claims 1,
9, and 15. As a result, we find that the Examiner has also erred in
concluding that: 1) the combination of Zhao, Belknap, and Gruse renders
dependent claims 2, 3, 8, 10, 12, 16, and 18 unpatentable; and 2) the
combination of Zhao, Belknap, and Iwamura renders dependent claims 6,
14, and 20 unpatentable.

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IV. CONCLUSION
The Examiner has erred in rejecting claims 1-20 as being unpatentable
under 35 U.S.C. § 103(a).

V. DECISION
We reverse the Examiner’s decision to reject claims 1-20.

REVERSED

msc