Ex Parte ULLMAN et al

Board of Patent Appeals and Interferences

Nov 17, 2010

09409305 (B.P.A.I. Nov. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CRAIG D. ULLMAN, MICHAEL R. ABATO,
JEFFREY M. HARRINGTON, and CARL R. DUDA
____________

Appeal 2010-002914
Application 09/409,305
Technology Center 2400
____________

Before JOSEPH L. DIXON, JEAN R. HOMERE, and STEPHEN C. SIU,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL 1

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.

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I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 149-183. The Appellants appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

A. INVENTION
The invention at issue on appeal relates to:

Systems consistent with the present invention
combine broadcast television programming and/or video
programming which appears on a VHS or Beta tape, CD-
ROM, DVD or other medium, or particular content from
the Internet, or video programming at a video server
(hereinafter "video programming") with the massive
Internet, creating a new and powerful educational and
entertainment medium. The system allows consumers to
receive more information in a more efficient manner than
either television or the Internet alone. Consumers not
only can see a news report on television, but they can
also read pertinent information about the report, as well
as explore related information about the story. The
program becomes the introduction to a particular subject,
rather than the entire subject itself. The act of viewing a
program has now become a more engaging, enriching
experience.
The system can also create a more intimate
relationship between the viewer and the program. The
user might be solving problems or performing virtual
experiments on the Internet site that a teacher is
discussing in an educational television program.
Similarly, the consumer might be solving problems that
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the fictional characters in a television program must
solve. In both cases, the consumer is an active participant
in the process, rather than a passive observer.
Instead of an undirected and unfocused exploration of
Internet sites, by synching specific Internet pages to the
video signal, the system puts the Internet in context. The
television program producers now can decide what
additional information to offer their audience. This
material can now be seen in the context of the television
program.

(Spec. 3-4.)

B. ILLUSTRATIVE CLAIM
Claim 149, which further illustrates the invention, follows.

149. A method for compiling and maintaining information for use
in routing and transmitting content to a machine via a network, the
method comprising:

receiving user activity information from the machine;

updating a user profile based on the received user activity
information;

determining a uniform resource identifier for identifying audio
or video content to transmit to the machine based on the received user
profile information;

inheriting user profile attributes into the user profile from a
group of which the user is a member; and

storing the user profile information in a hierarchical attribute
value-pair data structure,

wherein the audio or video content is selected based on the user
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profile and the audio or video content is used to enhance an audio
video program.

C. REFERENCES
The Examiner relies on the following references as evidence:

Kingdon US 5,784,560 Jul. 21, 1998
Rangan US 6,006,265 Dec. 21, 1999

D. REJECTIONS

Claims 149-183 are rejected under 35 U.S.C. 103(a) as being
unpatentable over to Rangan in view of Kingdon.

II. ISSUE
Has the Examiner set forth a sufficient reasoned conclusion of
obviousness over the combination of Rangan and Kingdon?

III. PRINCIPLES OF LAW
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he Examiner bears
the initial burden, on review of the prior art or on any other ground, of
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presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore,
‘there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness’ . .
. [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim,
for a court can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)(quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001).
“A reference may be said to teach away when a person of ordinary
skill, upon [examining] the reference, would be discouraged from following
the path set out in the reference, or would be led in a direction divergent
from the path that was taken by the applicant.” Para-Ordnance Mfg. v. SGS
Importers Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (alteration in
original) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). The
prior art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of the alternatives when the disclosure does not
criticize, discredit, or otherwise discourage the solution claimed. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). What the prior art teaches
and whether it teaches toward or away from the claimed invention are
determinations of fact. Para-Ordnance Mfg., 73 F.3d at 1088.

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V. ANALYSIS
With respect to independent claim 149, Appellants argue:

B) The combination of Rangan and Kingdon is improper.

When combining the features of two references provides an
inoperative result, and/or the references teach away from such a
combination, then there is no proper motivation to combine them.
This is precisely what occurs with the combination of Rangan and
Kingdon, as proposed by the Office.

(Brief 12). The Examiner provides a further discussion in the responsive
arguments at pages 5-6 of the Answer addressing Appellants’ argument.
Appellants restate the case law in the Reply Brief at pages 1-2, and
Appellants further argue that the fact that the references can be combined
does not mean that the references should be combined. (Reply Br. 2-3).

Appellants argue:
Thus, if the strictly regulated use of inheritance, as taught by
Kingdon, is added to the dependence on dynamic change taught by
Rangan, an inoperative system results. This is because attempts to
dynamically incorporate attribute changes within a user profile are
illicit, according to Kingdon, and will be denied. See Id. at Col. 8,
lines 19-21. However, if such modifications are prevented, as taught
by Kingdon, the system of Rangan that implements this mechanism
will cease to provide different interpretations for a hyperlink based on
the "expressed preferences of the SUV [subscribers/users/viewers]".
See Rangan, Abstract and Col. 9, lines 4-13. This defeats the
fundamental purpose of Rangan.

(Brief 13). We have considered Appellants' arguments and find them to be
unpersuasive of error. While Appellants' arguments tend to imply that a
combination of teachings of Kingdon and Rangan may not be optimal in all
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situations, the Examiner's proposed combination as set forth in the rejection
in the Answer does not appear to be unreasonable. We find that neither
reference may be said to expressly teach away from the proffered
combination. In particular, a person of ordinary skill, upon examining either
reference, would not be discouraged from following the path set out in the
reference, nor would be led in a direction divergent from the path that was
taken by the Appellants. Additionally, we find no disclosure which
criticizes, discredits, or otherwise discourages the solution achieved from the
combination. Therefore, we find Appellants' argument regarding the
combination and a teaching away to be unpersuasive of error in the
Examiner's showing of obviousness. Therefore, we will sustain the rejection
of independent claim 149 and independent claim 158, 164, 170, and 175
grouped therewith since Appellants have not set forth separate arguments for
patentability.
Appellants have not set forth separate arguments for patentability of
any of the individual dependent claims. Therefore, the dependent claims
will fall with their respective independent claims.
Only those arguments actually made by the Appellants have been
considered in this decision. Arguments which the Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii) (2008).
Appellants have argued in the Reply Brief at page 3 that "the office
did not articulate in which references, and wherein those references various
elements recited in claims 150-183 could be found. This lack of specificity
was finally remedied in the Answer, at least with respect to claims 150-157."
We note from the prosecution history that the Examiner set forth the
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statement of the rejection in the non-final office action, mailed May 21,
2008, rejecting all the claims as a single group. Subsequently, the Examiner
did not individually address the claims on page 2 in the final rejection and
stated that "[t]he rejections are maintained from the prior office action
mailed on 5/21/2008."
In response to the arguments the Examiner states:

Specifically, the applicant's vaguely disclosed and broadly claimed
concept of inheritance cannot be in any way viewed as being
patentably distinct from the concept of taking information for a single
user from a the properties of that user's neighborhood; a concept
clearly laid out in the rejection as being taught by Rangan. The
applicant has not even made an attempt to explain how this concept
shown in the rejection is not inheritance. Instead the applicant makes
technical arguments against the rejection that do not seem to be based
on factual evidence or sound reasoning. For these reasons the
rejection is maintained.

(Final Rejection 2). While we agree with the Examiner as stated
above, the Examiner has the initial burden to set forth the statement of the
rejection of the claims (which was well met by the Examiner previously with
other prior art references prior to the most recent Request for Continued
Examination (RCE)).
Appellants set forth in the Reply Brief three specific claims and
arguments for patentability where the Examiner has not specifically
addressed the claim limitations, and we do not readily find the teachings in
the enumerated locations identified by the Examiner for the rejection of
claims 150-157 which were specifically addressed by the Examiner.
Therefore, we are left to speculate as to the application of the prior art
teachings. Therefore, we find that the Examiner has not met the initial
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burden to establish a prima facie showing of obviousness with respect to
claims 170, 171, and 174, and we must reverse the Examiner's rejection
thereof.
VI. CONCLUSION
For the aforementioned reasons, the Appellants have not shown error
in the Examiner's showing of obviousness of independent claim 149 and
claims 150-169, 172, 173, and 175-183 fall therewith since separate
arguments for patentability have not been set forth in Appellants. The
Examiner has not shown a reasoned conclusion of obviousness for
dependent claims 170, 171, and 174.

VII. ORDER
We affirm the obviousness rejections of claims 149-169, 172, 173,
and 175-183. We reverse the obviousness rejections of claims 170, 171, and
174.

AFFIRMED-IN-PART

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