Ex Parte Tsuchida et al

Board of Patent Appeals and Interferences

Jul 17, 2012

09963136 (B.P.A.I. Jul. 17, 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.
09/963,136 09/24/2001 Ted Tsuchida 19017-CIP2 9928
21924 7590 07/18/2012
Arris Group, Inc.
3871 LAKEFIELD DRIVE
SUWANEE, GA 30024
EXAMINER
CHOWDHURY, SUMAIYA A
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
07/18/2012 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 TED TSUCHIDA, DOUGLAS A. MILLER, and
ROBERT E. NOVAK
____________________

Appeal 2010-002497
Application 09/963,136
Technology Center 2400
____________________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and KALYAN K.
DESHPANDE, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE1
The Appellants seek review under 35 U.S.C. § 134(a) of a final
rejection of claims 1, 3-262, 29-33, 37-42, 45, 54, and 57, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

The Appellants invented techniques for substituting programming
content during commercial breaks or other breaks in a broadcast content.
Specification 1:17-21.
An understanding of the invention can be derived from a reading of
exemplary claims 1 and 10, which are reproduced below [bracketed matter
and some paragraphing added]:
1. A method for performing a substitution for a broadcast
content, the method comprising:
[1] receiving broadcast content and one or more user-
selectable triggers associated with the broadcast content, the
one or more user-selectable triggers comprising addresses to
respective interactive sites corresponding to the broadcast
content;
[2] marking, during a presentation of the broadcast content,
at least one of the one or more user-selectable triggers in the
broadcast content in response to a user command, wherein
marking comprises, without first displaying information from a

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Aug. 6, 2009) and the Examiner’s Answer (“Ans.,” mailed June 8,
2009).
2 The Appellants have listed claims 24-25 as both being cancelled and
pending. App. Br. 2. Since claims 24-25 are listed in the Notice of Appeal
as claims being the subject of the appeal, we hold the listing of these claims
as cancelled as harmless error.
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selected interactive site associated with the at least one marked
trigger, storing address information for the selected interactive
site associated with the at least one marked trigger;
[3] detecting a break in the broadcast content; and
[4] automatically displaying, without user intervention, the
information from the same selected interactive site associated
with the at least one trigger that was marked during the
presentation of the broadcast content in response to the break in
the broadcast content.

10. The method of claim 1, wherein the break in the broadcast
content includes a commercial segment.

REFERENCES
The Examiner relies on the following prior art:
Guy
Picco
Walker
Eyer
Graham
Maybury
Freeman
Zigmond
US 5,833,468
US 6,029,045
US 6,263,505
US 6,588,015
US 6,732,183
US 6,961,954
US 7,079,176
US 7,181,756
Nov. 10, 1998
Feb. 22, 2000
Jul. 17, 2001
Jul. 1, 2003
May 4, 2004
Nov. 1, 2005
Jul. 18, 2006
Feb. 20, 2007

REJECTIONS
Claims 1, 3-6, 10, 12-17, 19-23, 37-38, 45, 54, and 57 stand rejected
under 35 U.S.C. §103(a) as being unpatentable over Zigmond and Freeman.
Claims 7-9 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Zigmond, Freeman, and Guy.
Claims 11 and 31-33 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Zigmond, Freeman, and Eyer.
Claims 29-30 and 39-41 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Zigmond, Freeman, and Picco.
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Claim 18 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Zigmond, Freeman, and Graham.
Claim 26 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Zigmond, Freeman, and Walker.
Claim 42 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Zigmond, Freeman, Picco, and Maybury.

ISSUES
The issue of whether the Examiner erred in rejecting claims 1, 3, 10,
12, 13, 26, 37, 54, and 57 turns on whether:
(1) the Examiner provided an articulated reasoning with some
rationale underpinning to support the legal conclusion of
obviousness;
(2) the combination of Zigmond and Freeman teaches or suggests:
a. “automatically displaying, without user intervention, the
information from the same selected interactive site
associated with the at least one trigger that was marked
during the presentation of the broadcast content in response
to the break in the broadcast content,”
b. “displaying the broadcast content when the break
terminates” as per claim 3,
c. the term “break” includes or represents “a commercial skip
segment,” “a broadcast stoppage,” or a “non-activity in a
broadcast event” as per claims 10, 12 and 13,
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d. “wherein the information from the selected interactive site is
loaded prior to the break in the broadcast content” as per
claim 37; and
(3) the combination of Zigmond, Freeman, and Walker teaches or
suggests “displaying a timer to indicate a time length for
showing the information from the selected interactive site” as
per claim 26 .

ANALYSIS
Claims 1, 54, and 57
The Appellants first contend that the Examiner has failed to establish
a prima facie case of obviousness for independent claims 1, 54, and 57
because the Examiner has failed to provide an articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.
App. Br. 7-10, 17-19, and 22-23. We disagree with the Appellants. The
Examiner found that a person with ordinary skill in the art would have
combined the teachings of Zigmond and Freeman in order to enhance the
customization of received content based on user preferences. Ans. 16. We
agree with the Examiner’s finding and conclusion. Ans. 3-4 and 16. We are
further unpersuaded by the Appellants’ argument that the proposed
modification to Zigmond would change the principle mode of operation of
Zigmond. App. Br. 8-9. The Appellants contend that modification of
Zigmond with Freeman would destroy Zigmond’s objective of being
“unobtrusive” (App. Br. 8-9); however, the Appellants set forth no
persuasive evidence illustrating Zigmond discourages or discredits the
modification as proposed by the Examiner. A reference does not teach away
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if it merely expresses a general preference for an alternative invention from
amongst options available to the ordinarily skilled artisan, and the reference
does not discredit or discourage investigation into the invention claimed. In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
The Appellants further contend that the combination of Zigmond and
Freeman fails to teach or suggest “automatically displaying, without user
intervention, the information from the same selected interactive site
associated with the at least one trigger that was marked during the
presentation of the broadcast content in response to the break in the
broadcast content,” as recited by claim 1 and similarly recited by claims 54
and 57. App. Br. 10-15, 19-22, and 23-26. The Appellants specifically
argue that Freeman describes the use of trigger points, but fails to teach or
suggest that the trigger points are detected breaks in the current program.
App. Br. 10-14, 19-20, and 23-25.
We disagree with the Appellants. While the Appellants argue that the
Specification describes a “break” may be “a commercial in a live broadcast
content, a commercial skip segment in a buffered live broadcast content, a
broadcast stoppage, or a non-activity in a broadcast event” (App. Br. 13
(citing Specification 7:13-16)), such an embodiment described by the
Specification does not limit the scope of the term “break.” Absent a
limitation narrowing the scope of the term “break” in the claims, we agree
with the Examiner that a “break” encompasses any identified point that
branches multimedia segments during a program, as described by Freeman.
Freeman 8:9-12. Since the broad term “break” encompasses trigger points,
we are not persuaded by the Appellants’ argument.
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The Appellants further argue that the information displayed at trigger
points is “not from a site associated with an icon selected by the user during
the program” (emphasis added). App. Br. 14-15, 20-22, and 25-26. We
disagree with the Appellants. As acknowledged by the Appellants, Freeman
describes that the information displayed is a user markers these triggers
during the beginning of a show. App. Br. 14 (citing Freeman 15:9-16 and
16:33-38). The Appellants, however, do not provide any additional
persuasive rationale or evidence that distinguishes Freeman’s description of
marking triggers at the “beginning of a show” and the claimed marking of
triggers “during a presentation of the broadcast content.” As such, we find
that the limitation “during a presentation” encompasses the “beginning of a
show.” As such, we are not persuaded by the Appellants’ argument.

Claim 3
The Appellants contend the combination of Zigmond and Freeman
fails to teach or suggest “displaying the broadcast content when the break
terminates,” as per claim 3. App. Br. 15. The Appellants specifically argue
that “Freeman is concerned with events that happen during the program and
is unrelated to events that happen after a break terminates.” App. Br. 15.
We disagree with the Appellants. As discussed supra, Freeman describes
the use of trigger points throughout a show. Freeman Fig. 5. Freeman
explicitly describes that a program continues after a trigger point. Freeman
Fig. 5. The Appellants argue that Freeman fails to describe a “break” as
asserted in support of claims 1, 54, and 57 supra; however this argument is
not persuasive for the same reasons. As such, we sustain the Examiner’s
rejection of claim 3.
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Claims 10, 12, and 13
The Appellants contend that the combination of Zigmond and
Freeman fails to teach or suggest the term “break” includes or represents “a
commercial skip segment,” “a broadcast stoppage,” or a “non-activity in a
broadcast event,” as per claims 10, 12, and 13 respectively. App. Br. 15-17.
Here, we agree with the Appellants. In our analysis of claims 1, 54, and 57,
we noted that the scope of the term “break” encompassed the trigger points
described by Freeman. However, claims 10, 12, and 13 are distinguished
from claim 1 by limiting the scope of a “break.” Freeman’s trigger points
are not the same as a commercial skip segment, a broadcast stoppage, or a
non-activity in a broadcast content. As such, the combination of Zigmond
and Freeman fails to teach or suggest the limitations of claims 10, 12, and 13
and we cannot sustain the Examiner’s rejection of these claims.

Claim 37
The Appellants contend that the combination of Zigmond and
Freeman fails to teach or suggest “wherein the information from the selected
interactive site is loaded prior to the break in the broadcast content,” as per
claim 37. The Appellants also argue “that the retrieval of information in
Zigmond is unrelated to a break in broadcast content.” App. Br. 17. We
disagree with the Appellants. As acknowledged by the Appellants and
discussed supra, Freeman describes that user selections correspond to
answers to interrogatory messages at the beginning of a show and are used
throughout the show at appropriate trigger points. App. Br. 14 (citing
Freeman 15:9-16 and 16:33-38). That is, information is selected prior to
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trigger points in a show. As such, Freeman describes “the information from
the selected interactive site is loaded prior to the break in the broadcast
content.”

Claim 26
The Appellants contend that the combination of Zigmond, Freeman,
and Walker fails to teach or suggest “displaying a timer to indicate a time
length for showing the information from the selected interactive site.” App.
Br. 26-27. We disagree with the Appellants. Walker explicitly describes
synchronization information that includes a running time-code that is
updated at predetermined intervals on the display screen. Walker 6:63-65
and Fig. 2. The time-code represents the time the supplemental information
is offset from the start of the video program. Walker 7:11-16 and Fig. 2.
That is, the time-code indicates a time of showing of the supplemental
information. The Appellants fail to provide any further persuasive rationale
or evidence to illustrate how this offset is distinguished from the time length
of the supplemental information. As such, the Appellants’ argument is not
found to be persuasive.

CONCLUSIONS
The Examiner did not err in rejecting claims 1, 3-6, 14-17, 19-23, 37-38,
45, 54, and 57 under 35 U.S.C. § 103(a) as unpatentable over Zigmond and
Freeman.
The Examiner erred in rejecting claims 10, 12, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Zigmond and Freeman.
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The Examiner did not err in rejecting claims 7-9 under 35 U.S.C.
§ 103(a) as unpatentable over Zigmond, Freeman, and Guy.
The Examiner did not err in rejecting claims 11 and 31-33 under 35
U.S.C. § 103(a) as unpatentable over Zigmond, Freeman, and Eyer.
The Examiner did not err in rejecting claims 29-30 and 39-41 under 35
U.S.C. § 103(a) as unpatentable over Zigmond, Freeman, and Picco.
The Examiner did not err in rejecting claim 18 under 35 U.S.C. § 103(a)
as unpatentable over Zigmond, Freeman, and Graham.
The Examiner did not err in rejecting claim 26 under 35 U.S.C. § 103(a)
as unpatentable over Zigmond, Freeman, and Walker.
The Examiner did not err in rejecting claim 42 under 35 U.S.C. § 103(a)
as unpatentable over Zigmond, Freeman, Picco, and Maybury.

DECISION
To summarize, our decision is as follows.
 The rejection of claims 1, 3-9, 11, 14-26, 29-33, 37-42, 45, 54, and 57
is sustained.
 The rejection of claims 10, 12, and 13 is not sustained.

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) (2010).

AFFIRMED-IN-PART

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