Ex Parte Weber et al

Board of Patent Appeals and Interferences

Oct 13, 2009

10383356 (B.P.A.I. Oct. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BARRY JAY WEBER, JENNIFER LYNN KOLAR, and RAJEEV
MADHUKAR SAHASRABUDHE
____________________

Appeal 2008-002321
Application 10/383,3561
Technology Center 2100
____________________

Decided: October 13, 2009
____________________

Before JAMES D. THOMAS, LANCE LEONARD BARRY,
and JEAN R. HOMERE, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on March 06, 2003. The real party in interest is Thomson Licensing.
Appeal 2008-002321
Application 10/383,356

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for allowing a user to
search and retrieve media content pertaining to a selected media service.
(Spec. para. 0006.) As depicted in Figures 2, 3, and 5, upon a user
manipulating a cursor (315) or an arrow (570, 582, 584, 586, 588) in a
remote control device (500) to select a media service (305, 310) rendered on
a media device (218), the metadata associated with the rendered media
service is used to automatically generate a query. (Spec. paras. 0037, 0039,
0043.) As shown in Figures 4 and 5, the user then activates a search button
(550) to submit the generated query to a search engine to thereby retrieve
media content related to the selected media service. (Spec. paras. 0041,
0046.) The search engine subsequently returns and displays a list of search
results containing the retrieved media content. (Spec. para. 0047.)

Illustrative Claim
Independent claim 1 further illustrates the invention as follows:

1. A method for conducting a search for a related media
service of a rendered media service comprising the steps of:

a. operating an indicator to select the media service
rendered on a media device, wherein metadata is associated
with said rendered media service;

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b. activating a user operated switch to enable a search
function, wherein said switch is on a user control device;

c. formatting automatically a query for a search from the
metadata associated with said rendered media service, wherein
said search query is submitted for a search;

d. preparing for display a search result listing the related
media service.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Hoffert 6,374,260 Apr. 16, 2002
Eyal 6,519,648 Feb. 11, 2003

Rejection on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 1 through 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Eyal and Hoffert.

Appellants’ Contentions
Initially, Appellants argue that the combination of Eyal and Hoffert
does not teach or suggest automatically formatting a query from metadata
associated with a rendered media service to thereby search for and display
related media service. (App. Br. 5-8.) However, in the Reply Brief
Appellants appear to have admitted that Eyal’s disclosure of opening a word
processor teaches the cited limitation. Specifically, Appellants state the
following:
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Appellants submit that opening of a word processor (in Eyal
alone or in combination with Hoffert) discloses the claimed step
of “formatting automatically a query for a search from the
metadata associated with a rendered media service” (emphasis
added) as claimed in Claim 1.

(Reply Br. 7.)
Examiner’s Findings/Conclusions
The Examiner finds that Eyal’s disclosure of submitting to a search
engine a query including data about a particular streaming media for finding
related streaming media teaches using metadata (data about data ) to
generate the query and to subsequently retrieve data related to a selected
media service. (Ans. 13-17.)

II. ISSUE
Have Appellants shown that the Examiner erred in finding that the
combination of Eyal and Hoffert teaches or suggests automatically
formatting a query from metadata associated with a rendered media service
selected by an indicator to thereby search for and display a listing of related
media service, as recited in claim 1?

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.

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Eyal
1a. Eyal discloses a preferred embodiment wherein a user enters
search terms to query a search engine for desired streaming media data to be
played back on a network. (Col. 3, ll. 25-52.)
1b. Eyal discloses an alternative embodiment wherein the user may
automatically generate the query without having to enter the search terms. In
particular, upon the user selecting a word processor application, a user query
signal associated therewith is automatically submitted in the background to
the search engine in order to retrieve a related streaming media (Col. 4, ll.
36- 43.)

Hoffert
2. Hoffert discloses a system for searching and uploading
multimedia content. In particular, Hoffert discloses that a user can annotate
media files to form metadata describing an uploaded media file. The user
can thereafter search, index, and analyze the metadata. (Col. 9, ll. 31-45.)

IV. PRINCIPLES OF LAW
Obviousness
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
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Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art" and discussed circumstances in which a patent might be determined to
be obvious. Id. at 401 (citing Graham v. John Deere Co., 383 U.S. 1, 13-14
(1966)) (citation omitted). The Court reaffirmed principles based on its
precedent that "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." Id. at 416. The operative question in this "functional approach" is
thus "whether the improvement is more than the predictable use of prior art
elements according to their established functions." Id. at 415, 417.
The Federal Circuit recently recognized that "[a]n obviousness
determination is not the result of a rigid formula disassociated from the
consideration of the facts of a case. Indeed, the common sense of those
skilled in the art demonstrates why some combinations would have been
obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416).
The Federal Circuit relied in part on the fact that Leapfrog had presented no
evidence that the inclusion of a reader in the combined device was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art." Id. at 1162 (citing KSR, 550 U.S. at 417-
418).
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One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See
Kahn, 441 F.3d at 987-988; In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991);
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, in evaluating such
references it is proper to take into account “not only the specific teachings of
the references but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
(CCPA 1968) (citation omitted).

V. CLAIM GROUPING
Appellants argue the patentability of claims 1 through 20 as four
separate groups. However, for each of the groups, Appellants substantially
repeat the same arguments as those presented for independent claim 1. In
accordance with 37 C.F.R. § 41.37(c)(1)(vii), we will consider these claims
as standing and falling respectively with claim 1.

VI. ANALYSIS
Independent claim 1 recites in relevant part automatically formatting a
query from metadata associated with a rendered media service selected by an
indicator to thereby search for and display a listing of related media service.
As set forth in the Findings of Fact section, Eyal discloses an
alternative embodiment for automatically generating a query upon selecting
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an application associated with a rendered media service (e.g. classical
music) to thereby retrieve from a search engine streaming media services
related thereto. (FF. 1b.) One of ordinary skill in the art would readily
appreciate that metadata or attributes of the media service are submitted to
the search engine to formulate the query upon the user selecting a word
processor associated with a media service. As admitted by Appellants, we
find that the cited disclosure of Eyal teaches automatically formatting a
query from metadata associated with a rendered media service selected by an
indicator to thereby search for and display a listing of related media service.
Additionally, we agree with the Examiner that Eyal and Hoffert are
properly combinable. In particular, we find that the ordinarily skilled artisan
would readily appreciate that Eyal and Hoffert disclose prior art elements
that perform their ordinary functions to predictably result in a system for
automatically formulating a query upon a user’s selection of a rendered
media, and for subsequently annotating the metadata upon which the query
is based to update the search of streaming media. Since Eyal teaches the
claimed limitation discussed above, we also find that the combination of
Eyal and Hoffert also teaches the cited limitation. It follows that Appellants
have not shown that the Examiner erred in concluding that the combination
of Eyal and Hoffert renders independent claim 1 unpatentable.
VII. CONCLUSION OF LAW
Appellants have not shown that the Examiner erred in rejecting claims
1 through 20 as set forth above.

VIII. DECISION
We affirm the Examiner’s decision to reject claims 1 through 44.
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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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