Ex Parte Wachtfogel et al

Board of Patent Appeals and Interferences

May 4, 2012

11599216 (B.P.A.I. May. 4, 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.
11/599,216 11/14/2006 Reuven Wachtfogel 7251/98617 1955
24628 7590 05/04/2012
Husch Blackwell LLP
Husch Blackwell Sanders LLP Welsh & Katz
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606
EXAMINER
SHELEHEDA, JAMES R
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
05/04/2012 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 REUVEN WACHTFOGEL, DAVID RICHARDSON,
SHLOMO KIPNIS, JONATHAN MAISSEL,
YOSSEF TSURIA, and YONATAN SILVER
______________

Appeal 2010-008334
Application 11/599,216
Technology Center 2400
______________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
THOMAS S. HAHN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008334
Application 11/599,216

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 83 through 97.
We affirm.
INVENTION
The invention is directed to a digital television recording interface that
allows a user to fast-forward through commercials and allows the user to
view shortened versions of commercials. See Specification pages 4 and 32.
Claim 83 is representative of the invention and reproduced below:
83. A method for use with a broadcast system, the system
having a headend for broadcasting program material with
commercials and a multiplicity of user locations, the method
comprising:
receiving the program material being broadcast; and
presenting at least one shortened commercial in response
to a user request, the user request selected from a group
consisting of a request for fast-forward mode and a request for
fast-backward mode;
the at least one shortened commercial being specially
prepared to convey meaningful information, and not being
merely a sequence of screens selected, by an automatic
sampling scheme, from a commercial that would have been
presented absent the user request.

REFERENCES
Plotnick US 2002/0178447 A1 Nov. 28, 2002

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Application 11/599,216

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REJECTIONS AT ISSUE
The Examiner has rejected claims 83 through 97 under 35 U.S.C.
§ 112 first paragraph as failing to comply with the written description
requirement. Answer 3-4.1
The Examiner has rejected claims 83 through 97 under 35 U.S.C.
§ 102(b) as being anticipated by Plotnick. Answer 5-6.

ISSUES
Rejection under 35 U.S.C. § 112 first paragraph.
Appellants argue on pages 10 through 21 of the Appeal Brief2 that
claims 83 through 97 satisfy the written description requirement. These
arguments present us with the following issue: did the Examiner err in
finding that the originally filed specification does not convey that the
Appellants possessed the limitation of a shortened commercial not being
merely a sequence of screens selected, by an automatic sampling scheme,
from a commercial that would have been presented absent the user request
for fast forward or backward control?3

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
March 29, 2009.
2 Throughout this opinion we refer to the Appeal Brief dated November 19,
2009 and Reply Brief dated May 14, 2010.
3 We note that Appellants’ arguments also present issues directed to
dependent claims 88, 89, 95, and 96; however, we do not reach these issues,
as the issue directed to representative claim 83 is dispositive of the appeal.
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Rejection under 35 U.S.C. § 102(b)
Appellants argue on pages 9 and 10 of the Appeal Brief that Plotnick
is not prior art. These arguments present us with the issue, did the Examiner
err in not granting claims 83 through 97 priority to before the filing date of
Plotnick?

ANALYSIS
Rejection under 35 U.S.C. § 112 first paragraph.
We have reviewed the Examiners’ rejection in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusion that the Examiner erred in finding that the originally filed
specification does not convey that the Appellants possessed the subject
matter of the disputed limitation.
Appellants have identified Specification page 32 as providing support
for this limitation. Appeal Brief 12. Page 32, paragraph 4, of the originally
filed specification states:
Preferably, during fast-forward and fast-backward
through the program, even when the program is a commercial, a
specially prepared meaningful shortened version of a full
commercial may be displayed on the television 50. Preferably,
each shortened version of a full commercial may last about 3
seconds, and other shortened versions of other commercials
may follow until browsing through fast-forward/fast-backward
is ended. It is appreciated that the shortened versions of the full
commercials are preferably characterized and treated as full
commercials.

The Examiner states:
While the specification discloses displaying a specially
prepared meaningful shortened version of a full commercial
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(page 32, paragraph 4) and that other shortened versions of
other commercials, there is no specific disclosure regarding
which commercials are being displayed as a shortened version.
The specification is silent on whether or not any of the
displayed shortened versions correspond to the original full
version commercial which was to be displayed.

Answer 4. We concur with the Examiner. Our reviewing court has said the
written description requirement “serves to both satisfy the inventor’s
obligation to disclose the technologic knowledge upon which the patent is
based, and to demonstrate that the patentee was in possession of the
invention that is claimed.” Capon v. Eshhar, 418 F. 3d 1349, 1357 (Fed.
Cir. 2005). “In order to comply with the written description requirement, the
specification ‘need not describe the claimed subject matter in exactly the
same terms as used in the claims; it must simply indicate to persons skilled
in the art that as of the [filing] date the applicant had invented what is now
claimed.’” All Dental Prodx. v Advantage Dental Products, 309 F.3d 774,
779 (Fed. Cir. 2002) (alteration in original) (internal cites omitted).
Appellants have presented a declaration from Mr. Shroud (attached as
item 1 in the evidence appendix to the Appeal Brief (pages 34-37),
hereinafter “Declaration”), to demonstrate that the skilled artisan would
interpret a “specially prepared meaningful shortened” commercial as
conveying possession of the concept of displaying a shortened commercial
that someone conceived and implemented and not merely a sequence of
screens selected by an automatic sampling scheme. Appeal Brief 14 and
Declaration page 1 (page 36 of the Appeal Brief). Mr. Shroud bases this
opinion upon his review of the Specification and his belief that a sequence of
screens selected by an automatic sampling scheme would fail to create an
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outcome that an advertiser would pay for. Declaration page 1 (page 36 of
the Appeal Brief).
We have considered this evidence and do not consider it to be
persuasive that the Examiner erred in determining that the specification fails
to support the claimed invention. As identified by the Examiner, the
specification is silent as to how the shortened commercials are made, thus it
is a high hurdle to show that Appellants invented a method of presenting a
commercial produced in a specific manner. Appellants’ evidence
concerning the understanding of a skilled artisan is premised on an expert’s
conclusion without identification of what particular evidence was relied on
for the opinion. Further, the expert’s opinion appears to be based upon
conclusory speculation as to techniques available and the results of those
techniques (i.e. that automatic sampling to produce commercials was known,
would not produce results that are as meaningful as if produced by a person,
and would not produce an outcome that an advertiser would pay for).
Declaration page 1 (page 36 of the Appeal Brief). Additionally, the
evidence does not show with particular support what a skilled artisan in this
country would have understood at the time of the invention. The original
application has a June 23, 1999 priority date; Mr. Shroud states his
specialization in interactive advertising is from 2000 to 2006. While he
states that he was in the TV industry from 1993 to 2000, he does not identify
any specialization prior to 2000. Declaration page 1 (page 36 of the Appeal
Brief). Thus, we are not persuaded of error in Examiner’s finding that the
originally filed specification does not convey that the Appellants possessed
the limitation of a shortened commercial not being merely a sequence of
screens selected, by an automatic sampling scheme, from a commercial that
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would have been presented absent the user request for fast forward or
backward control.

Rejection under 35 U.S.C. § 102(b)
We have reviewed the Examiners’ rejection in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusion that the Examiner erred in not granting claims 83 through 97
priority to before the filing date of Plotnick. The Examiner has denied
granting claims 83 through 97 the benefit of the filing date of the parent
application for the reasons discussed with respect to the rejection under 35
U.S.C. § 112 first paragraph. Answer 6-7. Appellants argue that the
Examiner erred in rejecting the claims under 35 U.S.C. § 112 first
paragraph, and thus the denial of the benefit of the June 23, 1999 priority is
in error. As discussed above, we do not find that the Examiner erred in the
rejection under 35 U.S.C. § 112, first paragraph. Thus, we similarly do not
find that the Examiner erred in failing to grant claims 83 through 97 priority.
We consider the Examiner to have properly considered Plotnick prior art and
sustain the Examiner’s anticipation rejection based upon Plotnick.

SUMMARY
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claims 83 through 97.

DECISION
The decision of the Examiner to reject claims 83 through 97 is
affirmed.
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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

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