Ex Parte Schein et al

Patent Trial and Appeal Board

Oct 16, 2017

12551422 (P.T.A.B. Oct. 16, 2017)

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.
12/551,422 08/31/2009 Steven M. Schein 004031-0026-111 2657
75563 7590
Haley Guiliano LLP
75 Broad Street
Suite 1000
NEW YORK, NY 10004
EXAMINER
HAILU, TADESSE
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
10/18/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
haleyguiliano_PAIR @ firsttofile. com
HGPatentDocket @ hglaw. com
DocketRequests @ hglaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN M. SCHEIN, SEAN A. O’BRIEN,
BRIAN L. KLOSTERMAN, and KENNETH A. MILNES
Appeal 2016-003208
Application 12/551,422
Technology Center 2100
Before CAROLYN D. THOMAS, LINZY T. McCARTNEY, and
ADAM J. PYONIN, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
48—108. Claims 1—47 have been canceled. We have jurisdiction under 35
U.S.C. § 6(b). We heard oral argument on September 19, 2017.
We REVERSE.
Appeal 2016-003208
Application 12/551,422
STATEMENT OF THE CASE
The present patent application concerns “systems and methods for
allowing the viewer to retrieve, initiate a subscription to, search, select, and
interact with television schedule and/or listing information located in a
remote database, computer network, or on-line service.” Specification 1:15—
19, filed August 31, 2009 (“Spec.”). Claims 48, 56, 65, 79, 93, and 101 are
independent. Claim 48 illustrates the claimed subject matter:
48. A method for transmitting video clips over the Internet,
implemented on a system including a data port, comprising:
receiving a request for a web page via the data port; and
generating the web page, wherein the web page includes a
first interactive media asset identifier for linking a viewer of the
web page to a first remote server and a second interactive media
asset identifier for linking the viewer to a second remote server,
and wherein, in response to a user selection of the first media
asset identifier, the first remote server:
transmits a video clip corresponding to the first interactive
media asset identifier over a data network for immediate
viewing, and
generates for display information that is contextually
related to the video clip, wherein the information is caused to be
displayed simultaneously with the video clip.
Appeal Brief 19, filed July 10, 2015 (“App. Br.”).
REJECTION
Claims 48—108 stand rejected under 35 U.S.C. § 102(a) as anticipated
by Charles L. Compton & Paul D. Bosco, Internet CNN NEWSROOM: A
Digital Video News Magazine and Library, IEEE Proc. Inf 1 Conf. on
Multimedia Computer & Systems (1995) (“Compton”). Final Office Action
3—9, mailed December 18, 2014 (“Final Act.”).
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ANALYSIS
Claims 48, 56, 93, 101
Independent claim 48 recites in relevant part “generates for display
information that is contextually related to the video clip, wherein the
information is caused to be displayed simultaneously with the video clip.”
Independent claims 56, 93, and 101 recite similar limitations.
With respect to this limitation, the Examiner found Compton discloses
simultaneously displaying a selected video clip and “contextually related
items” such as the “title or topic of the selected video clip and/or [a] textual
description or summary about the selected video clip.” Final Act. 5 (citing
Compton Fig. 1); see also Answer 9—10, mailed December 7, 2015 (“Ans.”)
(making a similar finding). The Examiner found Compton discloses the
contextually related items are “not only presented prior to transmission [of
the video clip] . . . but also available at the browser . . . after
transmission/download of the video clip.” Final Act. 2; see also Ans. 9
(same). The Examiner also found Compton “gives users the capability to
view (or print, if their WWW browser supports it) the closed caption text for
a segment.” Ans. 9 (citing Compton § 3.3.1). Based on these findings, the
Examiner found Compton discloses claim 48 ’s “generates” limitation and
similar limitations in claims 56, 93, and 101. See Final Act. 4—5; Ans. 9—10.
Appellants argue Compton does not expressly or inherently disclose
simultaneously displaying a video clip and information contextually related
to a video clip as required by independent claims 48, 56, 93, and 101. See
App. Br. 10-11. According to Appellants, the cited portions of Compton
say nothing about how Compton displays video clips, see App. Br. 11, and
“the Examiner relie[d] on asserted inferences and logical leaps to form his
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Application 12/551,422
rejection[], The argued inferences and logical leaps have no place in an
anticipation rejection, and, thus, the Examiner must be reversed,” Reply
Brief 2, filed February 8, 2016 (“Reply Br.”). As for the Examiner’s
findings that Compton discloses allowing a user to view and print closed-
captioned text and making video clip information available after a user has
downloaded the video clip, Appellants argue neither disclosure satisfies the
disputed “generates” limitation. Reply Br. 3^4.
“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. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987). The reference must “describe the claimed invention with
sufficient precision and detail to establish that the subject matter existed in
the prior art.” Wasica Fin. GmbHv. Cont’l Auto. Sys., Inc., 853 F.3d 1272,
1284 (Fed. Cir. 2017) (quoting Verve, LLCv. Crane Cams, Inc., 311 F.3d
1116, 1120 (Fed. Cir. 2002)).
Here, Compton describes a “multimedia news magazine” referred to
as the “Internet CNN NEWSROOM” or “Internet NEWSROOM.”
Compton Abstract, §3.1. The sections of Compton cited by the Examiner
disclose the Internet NEWSROOM includes an HTML table of contents that
contains (1) an icon or title that, when selected, causes a video clip to be
downloaded or displayed; (2) a summary of the video clip; and (3) and a link
to the close-captioned text for the video clip. See Compton §§ 3.1, 3.3.1,
3.4, 3.4.2, Fig. 1. The cited sections of Compton also disclose that users can
“view (or print, if their WWW browser supports it) the closed caption text
for a” video clip. Compton § 3.3.1.
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Application 12/551,422
Although Compton discloses that selecting the icon or title can result
in the Internet NEWSROOM displaying a video clip, Compton does not
describe what happens as the Internet NEWSROOM displays the video clip.
Compton simply discloses the “icons are used to make buttons for each
segment that display the video for the segment when selected. If there is not
an icon for a particular segment, the segment’s title is used to form a link to
the video.” Compton § 3.3.1; see also Compton Fig. 1 (showing an
exemplary Internet NEWSROOM table of contents). The same is true of
Compton’s disclosure that users can view or print closed-captioned text.
This disclosure only states that users can view or print closed-captioned text;
the disclosure does not describe what happens once a user views or prints
closed-captioned text. See Compton § 3.3.1.
Finally, contrary to the Examiner’s finding, Compton does not
explicitly disclose that information related to the video (e.g., the icon, title,
summary, close-captioned text, etc.) is still available after the clip has been
downloaded. Even if Compton did disclose information related to the video
is available after a clip has been downloaded, this disclosure would not
satisfy the limitation that “information that is contextually related ... is
caused to be displayed simultaneously with the video clip.” Because none of
the disclosures cited by the Examiner describes simultaneously displaying a
video clip and information contextually related to the video clip, the
Examiner has not shown Compton discloses the claimed subject matter with
sufficient precision and detail to anticipate the claim. See Wasica, 853 F.3d
at 1284.
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Claims 65 and 79
Independent claim 65 recites “generates for display a selectable option
during the transmission of the video clip, wherein a selection of the
selectable option causes a function to be invoked in relation to the video
clip.” Independent claim 79 recites the same limitation.
The Examiner found Compton discloses this limitation because, in the
Examiner’s view, Compton’s Figure 1 discloses that “during the
transmission of the video clip the user is presented with several multimedia
options such as a video clip, textual/title about the video clip, previewing the
video clip, and other relevant functions . . . wherein the transmitted
multimedia items are simultaneously shown at the user browser.” Final Act.
3 (citing Compton Fig. 1); see also Ans. 10 (finding Compton “discusses in
response to a user selection . . . presenting associated functions or options on
the display” (citing Compton § 3.3.1)).
Appellants argue “no portion of [Compton] describes playing a
selectable option during the transmission of a [video clip] . . ., much less a
selectable option that, when selected, causes a function to be invoked in
relation to the video clip.” App. Br. 12; see also Reply Br. 4—5 (making a
similar argument).
The sections of Compton cited by the Examiner show an Internet
NEWSROOM table of contents that includes icons or titles that, when
selected, causes a video clip to be downloaded or displayed, as well as links
to close-captioned text. See Compton §§ 3.1, 3.3.1, 3.4, 3.4.2, Fig. 1.
Compton also discloses users have “the capability to view (or print, if their
WWW browser supports it) the closed caption text for a segment. This
feature also allows users ... to ‘preview’ the segment by reading its closed
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caption text. . . Compton Fig. 1, § 3.3.1. But the cited portions of
Compton do not disclose presenting any of these options during the
transmission of a video clip as found by the Examiner. Accordingly, the
Examiner has not shown Compton discloses the claimed subject matter with
sufficient precision and detail to anticipate the claim. See Wasica, 853 F.3d
at 1284.
CONCLUSION
For the above reasons, we do not sustain the Examiner’s anticipation
rejection of independent claims 48, 56, 65, 79, 93, and 101 and their
respective dependent claims. Because an obviousness rejection is not before
us, we take no position on the obviousness of the pending claims. If
prosecution continues, the Examiner remains free to consider whether these
claims would have been obvious in light of the prior art, including Compton.
DECISION
We reverse the rejection of claims 48—108.
REVERSED
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