Ex Parte Newnam et al

Patent Trial and Appeal Board

Mar 20, 2013

10142756 (P.T.A.B. Mar. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SCOTT G. NEWNAM, IZET FRAANJE,
and DOUGLAS T. NEUMANN1
____________

Appeal 2010-009035
Application 10/142,756
Technology Center 2400
____________

Before JENNIFER S. BISK, JAMES B. ARPIN, and
TRENTON A. WARD, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-13 and 24-32. Claims 14-23 are cancelled. Br. 2.2 We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

1 Telefonaktiebolaget LM Ericsson is the real party in interest.
2 Throughout this opinion, we refer to (1) the Appeal Brief (Br.) filed
October 7, 2009, supplementing the Appeal Brief filed August 28, 2009; and
(2) the Examiner’s Answer (Ans.) mailed January 28, 2010.
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INVENTION
Appellants’ invention relates to synchronization systems and methods,
which coordinate the provision of interactive content that is provided both in
a broadcast signal and independently of a broadcast signal. See generally
Abstract. Claims 1, 9, and 28 are illustrative and are reproduced below with
disputed limitations emphasized:
1. A method for synchronizing enhanced content with a broadcast
signal provided from a broadcast system that has the ability to insert
content or triggers into the broadcast signal, and has a playlist with
broadcast event and timing information, the method comprising:
receiving timing information from the playlist and using the
timing information to generate synchronization triggers;
providing a synchronization trigger to a content server by a
device other than a first type of end user device to push the enhanced
content to the first type of end user device over a channel separate
from the broadcast signal; and
providing a corresponding content trigger to a broadcast system
to cause the content trigger to be inserted into the broadcast signal for
broadcast to a second type of end user device for pulling the enhanced
content from the content server, wherein the enhanced content for the
second type of end user devices that pull content from the content
server based on the content trigger inserted in the broadcast video
signal is synchronized with the enhanced content for the first type of
end user devices that receive pushed content from the content server.

9. A system for synchronizing enhanced content with a broadcast
signal provided from a broadcast system that has the ability to insert
content or triggers into the broadcast signal, and has a playlist with
broadcast event and timing information, the system comprising:
a synchronization application receiving timing information
from the playlist and using that timing information to generate
synchronization triggers, the synchronization application residing in a
device other than a first end user device;
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a content server configured to receive the synchronization
trigger from the synchronization application and push content to the
first end user device over a channel separate from the broadcast
signal; and
a trigger insertion application configured to receive the
synchronization trigger from the synchronization application for
causing the broadcast system to insert a content trigger that allows a
second end user device to pull the enhanced content from the server
using the content trigger.

28. A method for synchronizing enhanced content with a broadcast
signal provided from a broadcast system, the method comprising:
receiving timing information from a playlist and using the
timing information to generate an ITV content trigger;
providing the ITV content trigger to a content server by a
device other than a first or second type of end user device; and
using the ITV content trigger to concurrently push and pull
enhanced content corresponding to the ITV content trigger, wherein
the pushing is conducted by a content server for pushing the enhanced
content to the first type of end user device, and the pulling is
conducted by the second type of end user device for pulling the
enhanced content from the content server.

The Examiner relies on the following as evidence of unpatentability:
Bendinelli
Dougherty
US 6,061,719
US 7,028,327 B1
May 9, 2000
Apr. 11, 2006
(filed Mar. 29, 2000)

THE REJECTIONS
1. The Examiner rejected claims 9-13 and 25 under 35 U.S.C. § 102(e)
as anticipated by Dougherty. Ans. 3-5; Final Rej. 4-6.
2. The Examiner rejected claims 1-8, 24, and 26-32 under 35 U.S.C. §
103(a) as unpatentable over Dougherty and Bendinelli. Ans. 6-12;
Final Rej. 7-13.

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ANTICIPATION REJECTION BY DOUGHERTY
Initially, we note that the Examiner’s Grounds of Rejection, as stated
in the Answer, are not identical to the grounds of rejection as stated in the
Final Rejection, mailed January 14, 2009. Compare Ans. 3-5 with Final Rej.
4-6. In particular, the Examiner relies on different portions of Dougherty in
support of the anticipation rejection in the Answer and in the Final
Rejection. E.g., compare Ans. 4 with Final Rej. 5.3 Records from the U.S.
Patent and Trademark Office’s PATENT APPLICATION LOCATING
AND MONITORING (PALM) electronic database contain no evidence that
Appellants filed a petition under 37 C.F.R. § 1.181 to challenge the
Examiner’s untimely introduction of new grounds of rejection. Accordingly,
we treat any potential challenge as waived (see MPEP § 1207.03(IV)), and
we address the merits of the Examiner’s amended rejection.
The U.S. Court of Appeals for the Federal Circuit instructs that “[a]
claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). Regarding representative claim 9, the Examiner finds

3 In the Final Rejection, the Examiner relied on elements drawn from each of
two of Dougherty’s preferred embodiments: the first embodiment (Figs. 3,
5) and the second embodiment (Figs. 4, 6), to support the anticipation
rejection of claim 9. Final Rej. 2, 5 (citing Dougherty, col. 17, ll. 6-40 (first
embodiment); col. 18, ll. 14-23 (second embodiment)). In the Answer, the
Examiner changed the grounds of the anticipation rejection and limited them
to the first embodiment. Ans. 3-5. Nevertheless, in response to Appellants’
arguments, the Examiner again relies on elements drawn from both
embodiments. Ans. 13-14 (citing Dougherty, col. 13, ll. 24-50).
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that Dougherty discloses each and every element of Appellants’ system, as
recited in claim 9. Ans. 3-4; Final Rej. 4-5.
Appellants argue that the Examiner fails to demonstrate that
Dougherty discloses “a content server configured to . . . push content to the
first end user device over a channel separate from the broadcast signal”
(emphases added). Br. 5-8. In particular, Appellants argue that, to the
extent that Dougherty’s Consumer Premises Equipment (CPE) obtains
enhanced content via a path other than the broadcast signal, such enhanced
contact is “pulled,” rather than “pushed.” Id. at 6-8.
ISSUE
Under § 102, has the Examiner erred in rejecting claim 9 by finding
that Dougherty discloses “a content server configured to . . . push content to
the first end user device over a channel separate from the broadcast signal”?
ANALYSIS
We begin by construing the disputed limitation of claim 9 which calls
for, in pertinent part, “to . . . push content to the first end user device over a
channel separate from the broadcast signal.” In construing a limitation, we
apply the broadest reasonable meaning of the words in their ordinary usage,
as those words would be understood by one of ordinary skill in the art,
taking into account any definitions supplied by Appellants’ Specification. In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Initially, we note that, although the terms “push” and “pull” appear, in
some form, in each of the pending independent claims, Appellants do not
expressly define these terms in the Specification. Nevertheless, a pertinent
definition of the term “to pull” is “[t]he process of retrieving data from a
network server” (MICROSOFT COMPUTER DICTIONARY 430 (5th ed. 2002)
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(emphasis added)), and a pertinent definition of the term “to push” is “[i]n
networks and the Internet, to send data or a program from a server to a client
at the instigation of the server” (id. at 431(emphases added)). In the
Advisory Action, mailed April 3, 2009, the Examiner acknowledges that
“pulling” and “pushing” have different meanings in the relevant art.
Advisory Action 2. Moreover, referring to Figure 2, Appellants describe “a
content server” as a server that receives information and based on that
information sends content to a “first end user device” as, for example, a
personal computer, a set-top box, a net-top box, a wireless computer, a
console, and a hand-held computer. Spec. 8:3-14.
The Examiner contends that the language of the disputed element is
ambiguous and that it is unclear whether: (1) the trigger is provided over a
separate channel, (2) the enhanced content is pushed via a separate channel,
or (3) both operations (1) and (2) occur over a separate channel. Final Rej.
3. In view of Appellants’ description and the definitions provided above, we
construe the limitation as describing at least the second operation. See Spec.
10:7-9; Fig. 3. Thus, we construe the disputed limitation to recite that a
content server configured to send data at the instigation of the content server
(i.e., to push content) to the first end user device, such as those described
above, over a channel separate from the channel over which a broadcast
signal is sent.
Referring to Figure 3, the Examiner finds that Dougherty describes
that CPE 350 may receive broadcast data 338, including interactive content,
from a local network affiliate 330 or that CPE 350 may “retrieve” interactive
content from a content database 380. Final Rej. 5 (citing Dougherty, Fig. 3);
see also Dougherty, col. 14, ll. 13-19 (“the CPE 350 . . . communicatively
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couples 392 with the content database 380 via the data extractor 206 [of
Figure 2] to retrieve and act on the appropriate interactive content”
(emphasis added)). Further, Dougherty describes two preferred
embodiments which are distinguished by the locus of control for obtaining
interactive content. Ans. 13-14 (citing Dougherty, col. 13, ll. 24-50).
In the first embodiment, an application server 332 uses an Electronic
Programming Guide (EPG) database 360 in conjunction with a timing offset
database 370 to determine which interactive applications (e.g., interactive
content) is broadcast on a particular channel at a particular time, retrieves
the content from database 380, and broadcasts the content to CPE 350.
Dougherty, col. 13, ll. 25-33; Figs. 3, 5. It is with respect to this
embodiment that Dougherty describes the communication coupling 392.
Dougherty, col. 17, ll. 57-65; see Ans. 14. In the second embodiment, CPE
350, instead of application server 332, performs the EPG database 360 and
subsequent timing offsets database 370 determinations and retrieves the
interactive applications from interactive content database 380. Dougherty,
col. 13, ll. 33-39.
The Examiner notes, however, that Dougherty describes that “the
present invention does not limit the location at which determinations
regarding the interactive content are made, or actions regarding the
interactive content are taken, or the specific hardware or software apparatus
that makes these determinations, or takes these actions.” Dougherty, col.
13, ll. 45-50 (emphases added); see Ans. 14. Thus, the Examiner concludes
that Dougherty expressly or inherently discloses that interactive content
database 380 “pushes” interactive applications (e.g., interactive content) to
CPE 350. Ans. 14. We disagree.
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Initially, we find that, although the cited portion of Dougherty
(Dougherty, col. 13, ll. 24-50) may provide a reason to modify the teaching
of Dougherty to achieve the limitation recited in Appellants’ claim 9, the
cited portion of Dougherty does not provide an express or inherent
disclosure of the disputed limitation. Moreover, to the extent that the
Examiner relies on teachings selectively drawn from different embodiments
of Dougherty to disclose the disputed limitations of claim 9, this is improper
in the context of an anticipation rejection. Application of Arkley, 455 F.2d
586, 587-88 (CCPA 1972). In Arkley, the court found that
rejections under 35 U.S.C. § 103 are proper where the subject
matter claimed “is not identically disclosed or described”
(emphasis ours) in “the prior art,” indicating that rejections
under 35 U.S.C. § 102 are proper only when the claimed
subject matter is identically disclosed or described in “the prior
art.” Thus, for the instant rejection under 35 U.S.C. § 102(e) to
have been proper, the [cited] reference must clearly and
unequivocally disclose the claimed [system] or direct those
skilled in the art to the [system] without any need for picking,
choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference.
Such picking and choosing may be entirely proper in the
making of a 103, obviousness rejection, where the applicant
must be afforded an opportunity to rebut with objective
evidence any inference of obviousness which may arise from
the similarity of the subject matter which he claims to the prior
art, but it has no place in the making of a 102, anticipation
rejection.
Id. Here, we conclude that the Examiner fails to demonstrate that Dougherty
discloses that interactive content database 380 “pushes” content to CPE 350.
Instead, the Examiner relies on the possibility that Dougherty’s components
and their functions could be rearranged to achieve the disputed limitation.
See Ans. 13-14 (citing Dougherty, col. 13, ll. 24-50). This analysis may be
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appropriate to justify an obviousness rejection, but the Examiner may not
properly demonstrate anticipation in this manner.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of independent claim 9. We are persuaded of error in
dependent claims 10-13 and 25, for similar reasons. Therefore, we do not
sustain the rejection of these claims.

OBVIOUSNESS REJECTION OVER DOUGHERTY AND BENDINELLI
Regarding representative claim 1, the Examiner finds that Dougherty
teaches all of the limitations of claim 1, except that Dougherty does not
specifically teach the use of a first and second type of display device. Ans.
7; Final Rej. 8. Nevertheless, Bendinelli teaches the synchronization of two
different display devices.4 Id. Further, because Bendinelli teaches that “a
viewer which has a computer and a television in close proximity must
continually enter the televised [Uniform Resource Locators (URLs)] in order
to view a sequence of web content related to the television programing”
(Bendinelli, col. 1, ll. 38-42), the Examiner concludes that Bendinelli
suggests that a person of ordinary skill in the art would have reason to
modify Dougherty in view of Bendinelli to achieve the method, as recited in
claim 1. Ans. 7; Final Rej. 8.
Appellants argue that, for the same reasons discussed above with
respect to claim 9, Dougherty does not disclose, expressly or inherently,
“providing a synchronization trigger to a content server . . . to push the

4 We note that independent claim 1 does not recite a first and second display
device. Br. 11. We do not construe claim 1 (or claim 29) to require such
limitations. Nevertheless, because Appellants do not contest the
combination with Bendinelli, we do not address the combination further.
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enhanced content to the first type of end user device over a channel separate
from the broadcast signal.” Br. 7 (emphases added).
ISSUES
(1) Under § 103, has the Examiner erred by finding that Dougherty
and Bendinelli, collectively, teach or suggest:
(a) “providing a synchronization trigger to a content server . . . to push
the enhanced content to the first type of end user device over a channel
separate from the broadcast signal,” as recited in claim 1 (emphases
added)?
(b) “using the ITV content trigger to concurrently push and pull
enhanced content corresponding to the ITV content trigger,” as recited in
claim 28 (emphasis added)?
(2) Is the Examiner’s reason to modify the teachings of Dougherty
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?
ANALYSIS
1. Claim 1.
Based on the record before us, we discern no error in the Examiner’s
rejection of representative claim 1, which calls for, in pertinent part,
“providing a synchronization trigger to a content server . . . to push the
enhanced content to the first type of end user device over a channel separate
from the broadcast signal.” This limitation corresponds to a substantially
similar limitation in claim 9. Unlike the anticipation rejection of claim 9,
however, claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dougherty and Bendinelli. Thus, the Examiner concludes that the
foregoing remarks regarding Dougherty’s teaching of pushing interactive
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applications over separate channels with respect to claim 9 apply equally to
claim 1. Ans. 15.
Referring to Figures 3 and 5, Dougherty properly teaches that
interactive content may be pushed by a Data Insertion Unit (DIU) 336 of
application server 332 over broadcast channel to CPE 350. Ans. 6 (citing
Dougherty, col. 17, ll. 6-41; col. 12, ll. 29-43). Further, as noted above,
Dougherty teaches that CPE 350 may retrieve interactive applications from
content database 380 via communication couple 392, e.g., a separate
channel. Dougherty, col. 14, ll. 13-19; col. 17, ll. 57-65; Fig. 3. As
discussed above, Dougherty’s “system ‘does not limit the location at which
determinations regarding the interactive content are made, or actions
regarding the interactive content are taken, or the specific hardware or
software apparatus that makes these determinations, or takes these actions.’”
Ans. 14 (quoting Dougherty, col. 13, ll. 45-50). Thus, we agree that
Dougherty teaches or suggests that interactive applications may be pulled by
CPE 350 from content database 380 or pushed to CPE 350 from content
database 380. See Ans. 13-15. Moreover, in view of the quoted text,
Dougherty provides a reason to modify the teachings of Dougherty to push,
rather than pull, information from content database 380. Therefore, we are
persuaded that Dougherty teaches “providing a synchronization trigger to a
content server
. . . to push the enhanced content to the first type of end user device,” such as
a personal computer.
In addition, although Dougherty teaches that CPE 350 pulls
interactive applications from content database 380 over communication
couple 392 (Dougherty, Fig. 3), Dougherty teaches that “a wide variety of
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other transport mechanisms are available, including those that broadcast the
interactive application separately from the television program.” Ans. 14
(quoting Dougherty, col. 12, ll. 29-43). Thus, we agree with the Examiner
that Dougherty also teaches broadcasting interactive applications separate
from the television broadcast signal 338. See Ans. 14-15. Moreover, in
view of the quoted text, Dougherty provides a reason to modify the
teachings of Dougherty to push information from content database 380 over
a separate channel. Therefore, we are persuaded that Dougherty teaches or
suggests “providing a synchronization trigger to a content server . . . to push
the enhanced content . . . over a channel separate from the broadcast signal.”
In addition, we conclude that the Examiner’s reason to modify the teachings
of these Dougherty is supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of: (1) independent claim 1; (2) independent claim 29, which
recites commensurate limitations to the disputed limitation of claim 1; and
(3) claims 2-8, 24, 26, 27, and 30-32, which depend from claims 1 or 29 and
are not separately argued with particularity. Therefore, we sustain the
rejection to these claims.
2. Claim 28.
We begin by construing the disputed limitation of claim 28, which
calls for, in pertinent part, “using the ITV content trigger to concurrently
push and pull enhanced content corresponding to the ITV content trigger”
(emphasis added). As noted above, in construing a limitation, we apply the
broadest reasonable meaning of the words in their ordinary usage, as those
words would be understood by one of ordinary skill in the art, taking into
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account any definitions supplied by Appellants’ Specification. Morris, 127
F.3d at 1054. In response to a Non-Final Rejection, mailed June 18, 2008,
Appellants amended claim 28 to replace the term “both” with the term
“concurrently.” Amendment 5 (filed Sep. 18, 2008). A pertinent definition
of the term “concurrently” is “occurring or existing simultaneously or side
by side.” RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY 276 (2d
Random House ed. 1999) (emphasis added). Moreover, Appellants noted
that the amendment to claim 28 was supported by the disclosure in the
Specification that “[t]he ITV content server 220 can service these types of
ITV client devices at the same time, allowing for synchronization to
broadcast experiences across multiple client devices in real time” (Spec.
8:12-14 (emphasis added)). Amendment 8. Further, we note that the
adverbs: “concurrently,” “simultaneously,” and “at the same time” are
synonymous. ROGET’S INTERNATIONAL THESAURUS 65 (4th ed. 1977) (para.
118.6). Therefore, we construe that the disputed limitation to recite that the
ITV content trigger is used to simultaneously or at the same time push and
pull enhanced content corresponding to the ITV content trigger.
Appellants argue that the Examiner improperly relies on different
embodiments to teach this limitation. Br. 10. As we discussed above, such
reliance is not necessarily improper in the context of an obviousness
rejection. Nevertheless, the Examiner finds that “concurrently” does not
mean “simultaneously,” but, instead, the Examiner interprets the term to
mean “in the same general time frame” or “at any point in time, capable of
either pushing or pulling.” Ans. 15-16; see also Final Rej. 3-4. The
Examiner provides no source for the quoted text provided in the proposed
interpretation. Id. We conclude that the Examiner’s interpretation of the
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term “concurrently” is contrary to its ordinary usage, as evidenced by the
sources cited above, and to the supporting disclosure of Appellants’
Specification. See Morris, 127 F.3d at 1054. Because we disagree with the
Examiner’s interpretation of the term “concurrently,” the Examiner fails to
persuade us that the cited portions of Dougherty teach the disputed limitation
of claim 28.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of independent claim 28. Therefore, we do not sustain the
rejection to this claim.

CONCLUSION
The Examiner did not err in rejecting claims 1-8, 24, 26, 27, and 29-
32 under § 103(a), but the Examiner erred in rejecting claims 9-13 and 25
under § 102(e) and claim 28 under § 103(a).

DECISION
The Examiner’s decision rejecting claims 1-8, 24, 26, 27, and 29-32 is
affirmed; and the Examiner’s decision rejecting claims 9-13, 25, and 28 is
reversed.
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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