Ex Parte Morris

Board of Patent Appeals and Interferences

Jul 27, 2012

11022151 (B.P.A.I. Jul. 27, 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.
11/022,151 12/21/2004 Robert P. Morris I277/US 6631
49278 7590 07/27/2012
SCENERA RESEARCH, LLC
5400 Trinity Road
Suite 303
Raleigh, NC 27607
EXAMINER
ALATA, YASSIN
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
07/27/2012 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 ROBERT P. MORRIS
____________

Appeal 2010-000391
Application 11/022,151
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, THOMAS S. HAHN, and
JOHN A. EVANS, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000391
Application 11/022,151

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 1-24, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Appeal Brief (filed Mar. 25, 2009) and the Answer
(mailed June 19, 2009), for the respective details.

Appellant’s Invention
Appellant’s invention relates to facilitating a distributed audience
response for a broadcast in which a response from a participating client of a
broadcast is recorded and transmitted to an audience server. The transmitted
response is combined with responses from other participating clients by an
audience server and the combined responses are transmitted to a receiving
client for synchronization with the broadcast. See generally Spec. ¶ [004]).
Claim 1 is illustrative of the invention and reads as follows:
1. A method for providing a distributed audience response to a broadcast
that includes a first media stream, comprising:
receiving a media stream recorded by a participating client receiving
the broadcast;
combining the recorded media stream with recorded media streams
recorded by other participating clients receiving the broadcast into a second
recorded media stream; and
transmitting the second recorded media stream to a receiving client for
playback in synchronization with the broadcast of the first media stream.

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The Examiner’s Rejections
The Examiner relies on the following prior art to show
unpatentability:
Needham US 5,726,701 Mar. 10, 1998
Deweese1 EP 1241890 A2 Sep. 18, 2002
Claims 19-22 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter.
Claim 23 stands rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention.
Claims 1-5, 7-14, 16-20, and 22-24 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Needham.
Claims 6, 15, and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Needham in view of Deweese.

ANALYSIS
35 U.S.C. § 101 REJECTION
The Examiner’s non-statutory subject matter rejection of claims 19-22
is sustained. As noted by the Examiner, claims 19-22 recite “[a] computer
readable storage medium with program instructions” without specifying that
the program instructions are stored on the medium or are in a non-transitory
state (Ans. 3). Since Appellant’s disclosure is silent regarding any
implementation of the computer readable storage medium, we find that the
Examiner has broadly, but reasonably, construed the claimed subject matter
as covering both non-transitory tangible media as well as transitory

1 Both Appellant and the Examiner identify this reference as “Deweese,”
which is the surname of the second listed inventor.
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propagating signals. When the broadest reasonable interpretation of a claim
covers a signal per se, it must be rejected as covering non-statutory subject
matter. See In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007); Subject Matter
Eligibility of Computer Readable Media, 1351 OFFICIAL GAZETTE U.S. PAT.
& TRADEMARK OFF. 212 (Feb. 23, 2010).

35 U.S.C. § 112, SECOND PARAGRAPH, REJECTION
We do not sustain the Examiner’s indefiniteness rejection of
dependent claim 23. The Examiner has taken the position that the limitation
“recorded media stream” in line 2 has unclear antecedent basis in base claim
1 which has three recitations of recorded media streams (Ans. 4, 13).
We agree with Appellant, however, that an ordinarily skilled artisan,
when considering the claim context in its entirety, would understand the
language “at least one of the recorded media streams recorded by other
participating clients” in claim 23 as referring to the recorded media streams
by other participating clients that are combined into a second recorded
media stream in claim 1. Similarly, we agree with Appellant that the
language “earlier than the recorded media stream” in claim 23 refers to the
“recorded media stream” of a participating client in claim 1. Accordingly, it
is our opinion that the skilled artisan, having considered the disclosure and
the claim language in its entirety, would have no difficulty ascertaining the
scope of the invention recited in claim 23.

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35 U.S.C. § 102(b) REJECTION
Claims 1-3, 7- 9, 11, 12, 14, 16-19, and 22-24
Appellant argues, with respect to the anticipation rejection of
independent claims 1, 7, 11, 16, 19, and 22, that Needham does not disclose
the claimed features of a “second recorded media stream” (claim 1), or a
“combined response media stream” (claims 7, 11, 16, and 22), or a
“combined recorded media stream” (claim 19). According to Appellant,
Needham’s audience systems receive audience responses that are not
recorded and develop a response metric which is a value indicative of a level
of the response (Br. 26-29). In Appellant’s view, while Needham’s
broadcast system combines the response metrics from the various audience
systems, the combined response is merely a summation of values and cannot
be considered a recorded media stream as claimed.
We find Appellant’s arguments unpersuasive of any error in the
Examiner’s reasoned analysis which determines that, to whatever extent
Needham’s “response metrics” recorded by the client audience system may
be considered to be mere replicas of audience responses, there is no claimed
requirement that actual live audience responses be recorded (Ans. 14). We
similarly find no error in the Examiner’s finding (Ans. 15) that the
generation of a combined response metric by Needham’s broadcast system
and the subsequent generation of a synthesized response transmitted to all
audience systems can be reasonably interpreted as corresponding to the
claimed combined recorded media stream (col. 7, ll. 10-55).
Further, while Appellant’s arguments are directed to Needham’s
embodiment in which “response metrics” are developed from audience
responses, the Examiner (Ans. 15) has also made reference to an additional
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embodiment of Needham in which actual audience responses are digitized
and stored (col. 8, ll. 13-67). In this embodiment, streams of audience
responses, such as applause “claps,” are recorded by the audience system,
and transmitted to the broadcast system where a combined synthesized
media stream is developed and transmitted to all audience systems (col. 10,
ll. 1-6).
In view of the above discussion, we find that the Examiner did not err
in concluding that all of the limitations of independent claims 1, 7, 11, 16,
19, and 22 are present in the disclosure of Needham. Accordingly, the
Examiner’s 35 U.S.C. § 102(e) rejection of independent claims 1, 7, 11, 16,
19, and 22, as well as dependent claims 2, 3, 8, 9, 12, 14, 17, 18, 23, and 24
not separately argued, is sustained.

Claims 4, 13, and 20
We also sustain the Examiner’s anticipation rejection, based on
Needham, of dependent claims 4, 13, and 20. We find no error in the
Examiner’s determination (Ans. 16) that Needham would necessarily
include filtering techniques and output directors to distinguish between
audiences and to route combined audience responses to audiences which are
physically separated into, for example, a particular local area networks
(LANs), lecture rooms, and offices (col. 3, ll. 41-58). We also agree with
the Examiner’s additional line of reasoning in support of the rejection at
pages 16-19 of the Answer. Appellant has not filed a Reply Brief in rebuttal
of the Examiner’s position.
Lastly, to whatever extent Appellant is contending (Br. 30) that the
Examiner’s position is in error since Needham never uses any form of the
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terminology “group filter” or “output director, ” we would point out that
anticipation “is not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831,
832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. U.S. Int’l Trade Comm’n, 808
F.2d 1471, 1479 & n.11 (Fed. Cir. 1986)). “An anticipatory reference . . .
need not duplicate word for word what is in the claims.” Standard Havens
Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991).

Claim 5
The Examiner’s anticipation rejection of dependent claim 5 is also
sustained. Appellant reiterates the argument which alleges that the
“response metrics” of Needham do not correspond to the claimed “media
stream.” We find this argument unpersuasive as discussed supra.
Further, we agree with the Examiner’s line of reasoning which
determines that Needham’s disclosure (col. 7, ll. 33-39) of receiving
different responses from audiences would result in different combined media
streams transmitted to users at different times (Ans. 17). Appellant has
presented no arguments challenging the Examiner’s position.

Claim 10
We do not sustain the Examiner’s anticipation rejection of dependent
claim 10. We find no basis in the disclosures of Needham to support the
Examiner’s determination (Ans. 17-18) that “‘background noise’ or vocal
responses other than those constituting laughter, cheers, . . . ” corresponds to
the claimed “intelligible speech.” As argued by Appellant (Br. 31-32),
Needham has no disclosure of intelligible speech as being an audience
response received by the audience systems (col. 6, ll. 11-14). Accordingly,
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we agree with Appellant that, since Needham has no disclosure of
intelligible speech in the audience responses, there can be no removal of
intelligible speech as claimed.

35 U.S.C. § 103(a) REJECTION
The Examiner’s obviousness rejection of dependent claims 6, 15, and
21 based on the combination of Needham and Deweese is sustained.
Initially, we find Appellant’s argument (Br. 35) that Deweese does not
disclose combining retrieved recorded media into a combined media stream
unpersuasive since Needham has been relied upon for this teaching.
Further, contrary to Appellant’s contentions (App. Br. 35), we find
that the Examiner (Ans. 19) has provided an articulated line of reasoning
with a rational underpinning to support the conclusion of obviousness. We
agree with the Examiner’s (Ans. 19-20) determination that an ordinarily
skilled artisan would have recognized and appreciated that the invitee
features of the community based group chat teachings of Deweese would
have served as an obvious enhancement to the system of Needham, thereby
permitting private and secure chats. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007).

CONCLUSIONS
Based on the analysis above, we conclude that Appellant has not
demonstrated that the Examiner erred in rejecting claims 19-22 as being
drawn to non-statutory subject matter under 35 U.S.C. § 101, but has
demonstrated that the Examiner erred in rejecting claim 23 as being
indefinite under the second paragraph of 35 U.S.C. § 112. With respect to
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the anticipation rejection under 35 U.S.C. § 102(b), we conclude that
Appellant has not demonstrated the Examiner erred in rejecting claims 1-5,
7-9, 11-14, 16-20, and 22-24, but has demonstrated the Examiner erred in
rejecting claim 10. With respect to the obviousness rejection under 35
U.S.C. § 103(a), we conclude that Appellant has not demonstrated that the
Examiner erred in rejecting claims 6, 15, and 21.

DECISION
The Examiner’s decision rejecting claims 1-24 under 35 U.S.C.
§ 103(a) is affirmed-in-part.
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).

AFFIRMED-IN-PART

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