Ex Parte Markel

Board of Patent Appeals and Interferences

Sep 16, 2010

09934354 (B.P.A.I. Sep. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEVEN O. MARKEL
____________________

Appeal 2009-005410
Application 09/934,354
Technology Center 2600
____________________

Before MAHSHID D. SAADAT, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-10 and 15-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005410
Application 09/934,354

STATEMENT OF THE CASE
Appellant’s claimed invention is a method and system for delivering
enhanced content to a set-top box.
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:

1. A method for delivering enhanced content to a set-top box:

receiving a trigger included in a video signal input at said set-
top box for indicating that enhanced content is available;

establishing a communication link between a server and said
set-top box;

receiving instructions at the set-top box for identifying a type of
said set-top box;

forming a request for said enhanced content from said server
based on the type of set-top box; and

receiving enhanced content at said set-top box for generation of
an enhanced display.

REFERENCES
Blackketter US 2002/0056129 A1 May 9, 2002
Leak US 6,668,378 B2 Dec. 23, 2003

The Examiner rejected claims 1-10 and 15-20 under 35 U.S.C.
§ 103(a) based upon the teachings of Blackketter and Leak.

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ANALYSIS
Appellant contends Leak does not disclose “receiving instructions at
the set-top box for identifying a type of set-top box” and “forming a request
for enhanced content from the server based on the type of set-top box,” as
recited in claim 1 (App. Br. 8).
The Examiner finds Leak discloses set-top boxes that are either
“connected receivers” or “disconnected receivers,” and it must be
determined whether a set-top is “connected” or “disconnected” before
executing a trigger for “connected” content. If the set-top box is determined
to be a “connected receiver,” then a “connected” content trigger will be
executed. The Examiner concludes these findings meet the limitations of
receiving instructions at the set-top box for identifying a type of set-top box
and forming a request for enhanced content based on the type of set-top box.
(Ans. 9-10)
However, the Examiner’s interpretation of a “type” of set-top box, as
recited in claim 1, as being a connected receiver or a disconnected receiver
is overly broad. The scope of the claims in a patent application is
determined not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction in light of the Specification as
it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The status of a set-top
box’s connection to remote information, for example, an Internet
connection, is different from identifying the type of a set-top box (e.g.,
WebTV, AOLTV, etc. (Spec. 2:7-8; Spec. 8:26-9:4; Fig. 4)) and forming a
request for enhanced content based on the type of set-top box. Leak only
discloses whether a trigger will be executed, if at all, depending on the
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Application 09/934,354

connectivity of the set-top box, not whether the requested enhanced content
will be based on the type of set-top box being used.
Claims 7 and 15 also recite limitations relating to the type of set-top
box. In particular, claim 7 reads “establishing said set-top box type;
transmitting said enhanced content corresponding to said type of said set-top
box” and claim 15 reads “in response to said trigger sends a signal
containing header information conveying type and location information of
said set-top box.” As argued by Appellant, Leak fails to disclose these
limitations for the same reason discussed above, namely, that “connected”
and “disconnected” are not attributes that meet the limitation of a set-top box
“type,” as recited in the present claims (App. Br. 10, 11).
For these reasons, we do not sustain the rejection of claims 1, 7, and
15 over Blackketter in view of Leak. Nonetheless, the claimed invention
would have been obvious over Blackketter and the prior art set forth in
Appellant’s Provisional Application No. 60/227,062, and accordingly, we
enter a new ground of rejection

NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection.
Claims 1, 4-10, 15, and 18-20 are rejected under 35 U.S.C. § 103(a) based
upon Blackketter in view of the reference titled “Using a Browser Sniffer to
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Detect WebTV” (“the WebTV reference”), which is appended to this
decision.2
Contrary to the Examiner’s finding that Blackketter does not disclose
the steps of “establishing,” “receiving,” and “forming” (Ans. 4), Blackketter
does teach “establishing a communication link between a server and said set-
top box” and “receiving enhanced content at said set-top box for generation
of an enhanced display” (Blackketter ¶ [0002]).
The WebTV reference discloses a browser sniffer that when combined
with Blackketter discloses “receiving instructions at the set-top box for
identifying a type of said set-top box” and “forming a request for said
enhanced content from said server based on the type of set-top box,” as
claimed. A set-top box browser may retrieve Web content via an HTTP
request, wherein the HTTP request includes a USER_AGENT attribute and
the content is based on the USER_AGENT (WebTV reference, page 1). For
example, in the CGI script written in Perl, if the USER_AGENT is
“WebTV,” the browser is redirected to the page “tv_index.html” that is
specifically intended for WebTV users (page 2). In this case, the
USER_AGENT attribute meets the limitation of a “type” of set-top box.
The set-top box necessarily must have “receiv[ed] instructions . . . for
identifying a type of said set-top box” by determining and providing the
USER_AGENT attribute in the HTTP request. Further, the HTTP request is

2 Provisional Application No. 60/227,062, which is the basis for a claim of
priority benefit for the present Non-Provisional Application, describes at
page 1 a “prior art method for use with enhancements” that may be found at
http://developer.webtv.net/design/sniffer. A search for an archived version
of this Web site on http://www.archive.org yielded the page titled “Using a
Browser Sniffer to Detect WebTV,” dated June 8, 1999 (see appended
document).
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“based on the type of set-top box” because it includes the USER_AGENT
attribute.
Therefore, it would have been obvious to a person having ordinary
skill in the art at the time the invention was made to combine the browser
sniffer of the WebTV reference with the system disclosed in Blackketter to
obtain Appellant’s invention. The skilled artisan would recognize that the
system of Blackketter would have benefited from the disclosure of the
WebTV reference providing “a useful tool for customizing [a] Web site to
various categories of users” whereby one could “deliver a certain Web page
to [a] WebTV viewer and a different page to [other] viewers” (WebTV
reference, page 1),
With respect to claim 7, the Examiner finds Blackketter does not
disclose the “sending” and “decoding” limitations (Ans. 6). However, as
noted above with respect to claim 1, the WebTV reference teaches sending
an HTTP request with the USER_AGENT attribute, which the server
executing the CGI script uses to redirect the set-top box browser to the page
specifically intended for the identified USER_AGENT (WebTV reference,
page 2). The HTTP request meets the limitation of “sending a signal from
said set-top box to said server.” Further, redirection of the WebTV browser
based on the USER_AGENT attribute meets the limitations of “decoding a
signal header,” “based on the decoded signal header, establishing said set-
top box type,” and “transmitting said enhanced content corresponding to said
type of said set-top box.” Particularly, the USER_AGENT corresponds to a
signal header. The CGI script determines whether the USER_AGENT is
“WebTV,” which corresponds to decoding a signal header and establishing
the set-top box type (see page 2). The set-top box browser is redirected to
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the “tv_index.html” page intended for WebTV set-top boxes, which
corresponds to transmitting enhanced content corresponding to the set-top
box type (see page 2). Thus, the combination of Blackketter in view of the
WebTV reference meets all of the limitations of claim 7 and would have
been obvious for the reasons articulated above with respect to claim 1.
With respect to claim 15, the Examiner finds Blackketter does not
disclose “in response to said trigger” the set-top box “sends a signal
containing header information conveying type and location information of
said set-top box” (Ans. 7). However, as set forth above, the USER_AGENT
attribute of the HTTP request disclosed in the WebTV reference meets the
limitation of sending a signal containing header information conveying the
type of set-top box. Further, it is well known in the art that Internet packets
include a header field corresponding to a source IP address, which
corresponds to “header information conveying . . . location information of
said set-top box.” Thus, the combination of Blackketter in view of the
WebTV reference meets all of the limitations of claim 15 and would have
been obvious for the reasons articulated above with respect to claim 1.
With respect to dependent claims 4, 8, and 18, Blackketter discloses a
trigger “located in a vertical blanking interval of the video signal input”
(Blackketter ¶ [0004]).
With respect to dependent claims 5, 9, and 19, Blackketter discloses a
trigger that is “a command string written in Advanced Television
Enhancement Forum compliant code” (Blackketter ¶ [0033]).
With respect to dependent claims 6, 10, and 20, Blackketter discloses
a communication link established at the instigation of a trigger is a Hyper
Text Transfer Protocol communication link (Blackketter, Fig. 4).
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DECISION
The Examiner’s decision rejecting claims 1-10 and 15-20 is reversed.
A new ground of rejection for claims 1, 4-10, 15, and 18-20 under 35
U.S.C. § 103(a) is entered.

TIME PERIOD
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) also provides that the Appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request that the proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
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)(v).

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Appeal 2009-005410
Application 09/934,354

REVERSED
37 C.F.R. § 41.50(b

ELD

SCHWEGMAN, LUNDBERG & WOESSNER/OPEN TV
P.O. BOX 2938
MINNEAPOLIS, MN 55402-0938
9
Browser Sniffer
nav_design.GIF (4400 bytes)

Using a Browser Sniffer
to Detect WebTV
June 8, 1999
A browser "sniffer" or detector is a useful tool for customizing your Web site to
various categories of users. For example, you can use a browser sniffer script to
deliver a certain Web page to your WebTV viewers and a different page to your
Internet Explorer or Netscape visitors. You can create custom sniffers to detect all
sorts of browsers; this article focuses on the detecting the WebTV browser with
JavaScript and CGI.
JavaScript
The JavaScript code in this example uses the navigator object, which contains
information about the software a viewer is using to view a Web page. Also, since
browsers that do not support JavaScript are still being used, you should probably
include a NOSCRIPT code block with a default BODY tag.
Once you have done the setup code, you can apply the if block anywhere in your
HTML code where you would like to refine page delivery for a particular viewer.
JavaScript example:

I see you've turned off JavaScript.

CGI
This CGI script separates WebTV from other browsers. The example noted below is
a Perl CGI solution. This script detects the browser visiting the site by looking at its
HTTP_USER_AGENT string. If that string contains "WebTV" then the browser is
redirected to /tv_index.html. Otherwise, the browser is redirected to /ie_index.html.
Example of CGI script written in Perl:
#!/usr/local/bin/perl -w
$webTV_url = "/tv_index.html";
$other_url = "/ie_index.html";
if ($ENV{'HTTP_USER_AGENT'} =~ /WebTV/)
{
$location = $webTV_url;
}
else # all others
{
$location = $other_url;
}
print "Location: $location\n\n";

http://web.archive.org/web/19991001233638/developer.webtv.net/design/sniffer/ (2 of 2)9/16/10 6:48:36 PM