Ex Parte Weinstein et al

Patent Trial and Appeal Board

Mar 31, 2016

10625752 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/625,752 07/23/2003
71867 7590 04/04/2016
BANNER & WITCO FF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
FIRST NAMED INVENTOR
Steven Weinstein
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
007412.00212 8134
EXAMINER
BELNEAU, SCOTT E
ART UNIT PAPER NUMBER
2427
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
PTO-71867@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN WEINSTEIN, JAMES E. PALMER,
TYLER M. JOHNSON, JAMES R. FULKER, GEOFFREY A. KATZ,
MARK A. VICKERS, and CHEE YU.
Appeal2014-001222
Application 10/625,752
Technology Center 2400
Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1, 7, 8, 10, 11, 13-16, 18-21, 23, and 25-39.
App. Br. 1. 1'2 Claims 2-6, 9, 12, 17, 22, and 24 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b ).
1 Throughout this Opinion, we refer to (1) the Non-Final Rejection (Non-
Final Act.) mailed December 18, 2012, (2) the Appeal Brief (App. Br.) filed
June 21, 2013, (3) the Examiner's Answer (Ans.) mailed September 4, 2013,
and (4) the Reply Brief (Reply Br.) filed November 1, 2013.
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Application 10/625,752
We atlirm-in-part. Pursuant to our authority under 37 C.F.R.
§ 41.50(b), we newly reject claim 1under35 U.S.C § 102(e).
INVENTION
Appellants' invention combines television broadcasts and interactive
information. Spec. 6: 19-20. For example, the invention can overlay
interactive or personalized images on a broadcast television image.
Id. 6:20-7:2. Claim 1, reproduced below with our emphasis, is illustrative:
1. An information system, comprising:
a television interface configured to receive television
information comprised in a television signal, wherein said
television signal comprises a reference to interactive
information;
an interactive information interface configured to receive
data through a network; and
a controller configured to:
cause the interactive information interface to
retrieve the interactive information corresponding to the
reference through the network; and
2 After filing the Notice of Appeal, Appellants filed an amendment canceling
claims 20, 25-30, and 35-38, as well as amending claim 16. See
Amendment submitted June 20, 2013 ("Response After-Final"). Appellants
treat the amendment as entered. See App. Br. 18-21, Claims App'x.
Although the remarks submitted with the Amendment indicate that the
Examiner agreed that the amendments were proper during an interview (see
Amendment 6), there is no corresponding statement by the Examiner in the
record clearly reflecting such agreement, let alone that the amendment was
entered. In fact, the subsequent correspondence by the Examiner states
"every rejection set forth in the Office action dated December 18, 2012 from
which the appeal is taken is being maintained by the examiner." Ans. 3. For
the purposes of this appeal, then, we treat (1) claims 20, 25-30, and 35-38
as pending, and (2) claim 16 as it exists prior to appeal.
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generate an image representative signal adapted for
use by a display device, said image representative signal having
corresponding presented imagery that includes an interactive
portion containing said interactive information and a television
portion containing said television information.
The Examiner relies on the following as evidence of unpatentability:
Shoff
Ho arty
Gough
Logan
Nadan
US 6,240,555B1
US 6,305,020B1
us 6,072,489
us 5,892,536
us 5,321,750
May 29, 2001 (filed Mar. 29, 1996)
Oct. 16, 2001 (filed Dec. 9, 1997)
June 6, 2000 (filed Sept. 30, 1993)
April 6, 1999 (filed Oct. 3, 1996)
June 14, 1994 (filed May 8, 1992)
THE REJECTIONS
Claims 1, 7, 8, 10, 13-16, 18, 19, 21, 23, 31-34, and 39 are rejected
under 35 U.S.C. § 102(e) as anticipated by Shoff. Non-Final Act. 3-14.
Claims 11 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shoff and Roarty. Non-Final Act. 14--16.
Claims 25; 28; 29; and 38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shoff and Gough. Non-Final Act. 16-24.
Claims 26, 35, and 36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shoff, Gough, and Logan. Non-Final Act. 24--26.
Claims 27, 30, and 37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shoff, Gough, and Nadan. Non-Final Act, 26-29.
THE ANTICIPATION REJECTION OVER SHOFF
Claims 1, 7, 8, 10, 13-15, 31, 32, and 39
Claim 1 recites, in part, "a television interface configured to receive
television information comprised in a television signal, wherein said
television signal comprises a reference to interactive information." The
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Examiner finds that Shoff teaches all of the limitations of independent claim
1. Non-Final 3---6. According to the Examiner, the recited "television
information" corresponds to Shoff s television program content, and the
"reference to interactive information" corresponds to Shoff s universal
resource locator (URL) in data field 58. Ans. 4. The Examiner further finds
that "everything coming from network 32 is a 'television signal.'" Id. at 5;
see also id. at 7-11.
Among other contentions, Appellants argue that Shoff does not
transmit URL 58 in the same television signal as the television program
content. App. Br. 8-9. According to Appellants, Shoffs URL 58 is in the
electronic program guide (EPG) data records that are delivered in a separate
signal. Id. at 9. Furthermore, Appellants contend that the Examiner's
interpretation of the recited "television signal" is unreasonable. Id. at 10-13.
Issue
Under§ 102, has the Examiner erred in rejecting claim 1 by finding
that Shoff discloses "a television interface configured to receive television
information comprised in a television signal, wherein said television signal
comprises a reference to interactive information"?
Analysis
The record does not support the Examiner's finding that the URL in
data field 58 is transmitted on the mapped "television signal" (e.g., Shoffs
television content). Non-Final Act. 3--4; Ans. 4--5. As discussed below,
Shoff suggests that the URL is transmitted at different times and from
different sources than the television content.
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Specifically, the URL at issue is maintained at Shoff's electronic
program guide (EPG) server 44. Shoff, col. 5, 11. 8-11, 61---66. This EPG
server uses data structure 48 to organize programming information. Id.
Data structure 48 has data fields 58 to correlate data with television
programs. Id., col. 6, 11. 49-53; see also id., Fig. 3 (showing data structure
48). For example, if a television program has supplemental content, data
field 58 stores a URL describing the protocol or a designation to a location
containing the supplemental content. See id., col. 6, 11. 33-36, 49-56, and
58---61. EPG server 44 is at headend 22. Id., col. 5, 11. 6-8. Headend 22
communicates with viewer computing unit 24 over a network. See id., col. 7,
11. 19-23. But a subset of data structure 48 is also stored locally at the
viewer computing unit 24. Id., col. 7, 11. 1-3. This locally cached EPG data
provides quick access to the data. Id., col. 7, 11. 5-8. Server 44 transmits
EPG data periodically in batch or individually to the home, viewer
computing unit. Id., col. 7, 11. 3-5.
Regarding this transmission, we agree that Shoff is silent on whether
headend 22 transmits the EPG data on the same signal as television
information as required by claim 1. App. Br. 9. For example, Shoff's single
network may use two signals to transmit the EPG's URL and the video.
That is, television information (e.g., video programs 40) is transmitted by
continuous media server 42, while EPG data (e.g., reference to interactive
content, URL) is transmitted periodically at other times. Shoff, col. 4, 11.
16-21, col. 4, 1. 66-col. 5, 1. 5, col. 7, 11. 3-5; Fig. 2. Moreover, the single
arrow between headend 22 and set-top box 26 does not demonstrate
sufficiently that the video and EPG data signals are necessarily combined
into a signal and sent over network 32. Also, although Shoff discusses a
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prior art technology that combines generic internet data with video data
(Shoff, col. 2, 11. 31-33, cited at Reply Br. 9 (responding to the Examiner's
discussion on page 11 of the Examiner's Answer)), this does not
demonstrate that the URL data is necessarily combined with the video
programs in Shoff s system, as proposed by the Examiner.
Notably, Shoff sends supplemental content-the data referenced by
the EPG's URL-on a single signal. See Shoff, col. 10, 11. 18-33. This
supplemental content, however, is different from the EPG's URL mapped by
the Examiner to the recited "reference to interactive information." Id., col. 3,
11. 4--9, col. 6, 11. 53-56; see Ans. 4. Specifically, the EPG data references a
location that contains the supplemental data. Id. Furthermore, Shoff s use
of a single signal to transmit supplemental content and video does not
demonstrate that the EPG's URL is inherently transmitted on this single
signal. Id.
The Examiner additionally interprets the recited "television signal" to
include everything sent over Shoff s network is the recited signal. See, e.g.,
Ans. 5, 7-11. We agree that this construction is unreasonably broad. See
Ans. 10. Specifically, the claim requires "a television signal"-i.e., a single
signal that contains both television information and a reference to interactive
information. But as noted above, Shoff s network discloses multiple signals
are used to transmit the recited data, including EPG information and video
content, over the network.
Accordingly, this record does not support the Examiner's finding that
Shoffs EPG and television content are in the same signal (Non-Final
Act. 3--4). As such, we are constrained by this record to find that the
Examiner has erred in finding that Shoff teaches the recited television signal.
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For the foregoing reasons, we determine the Examiner erred in the
rejecting independent claim 1, and dependent claims 7, 8, 10, 13-15, 31, 32,
and 39, for similar reasons.
Claims 16,3 18, 19, 21, 33, and 34
We, however, sustain the Examiner's rejection of claim 16.
Non-Final Act. 9-11. Appellants contend that Shoff does not disclose the
recited "web content ... referenced in the television content." App. Br. 13.
In particular, Appellants argue video program 210 does not include data
structure 48 that contains "the alleged 'reference to web content."' App. Br.
13.
But Appellants' argument (id.) does consider fully the scope of claim
16 and Examiner's position. In particular, the claim 16 does not recite a data
structure. In fact, the claim does not specify how the web content is
"referenced in the television content." Furthermore, Appellants do not point
to any definition for "referenced" in the Specification to limit our
interpretation to a particular method of referencing. See App. Br. 13. And
as discussed below, the web and television content need not be transmitted
together.
Given this interpretation, the Examiner's finding that Shoff s Figure
8a shows web content referenced in television content (Ans. 11-12) is
3 As discussed previously, Appellants proposed amending claim 16 to
remove the first limitation reciting "initializing a display system." This non-
entered amendment is reflected in claim 16 of the Claim Appendix section
of the Brief. See App. Br. 19-20. As stated previously, we consider claim
16 as presented in Appellants' Brief (id.), has not been entered into the
record and is the incorrect version of the claim on appeal.
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reasonable. Specifically, icon 204 refers to Shoff's web content because the
user is taken to the web content when the icon is actuated. See Shoff, col. 9,
11. 54--59. Figure 8a shows icon 204 is displayed within the boundaries of
the television content 210. In other words, Shoff discloses a reference to the
web content 204 in the television content 210 or the disputed limitation in
claim 16.
Also, Appellants contend that Shoff does not transmit the video
program and EPG data structure 48 in the same signal. App. Br. 13.
Appellants' argument (id.), however, is not commensurate with the scope of
claim 16. Unlike claim 1, claim 16 does not recite an interface configured
for receiving "a television signal" containing certain information. Instead,
claim 16 recites "receiving television content" without further limitation on
(1) what constitutes that content apart from referencing web content in the
television content or (2) how that television content is received. That is,
claim 16 does not preclude using multiple signals to transmit the recited
television content.
We thus are unpersuaded by Appellants' argument regarding Shoff
failing to transmit certain information together or Shoff's possible use of
multiple networks and channels. App. Br. 13; Reply Br. 8-9. Specifically,
nothing in the claim precludes "receiving television content" from multiple
networks. See id. at 8. For similar reasons, Appellants have not shown how
Shoff' s multiple channels or vertical blank interval (VBI), used to transmit
content, pertains to or addresses the scope of claim 16. See id. at 9.
For the foregoing reasons, Appellants have not persuaded us the
Examiner erred in rejecting independent claim 16, as well as dependent
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claims 18, 19, 21, 33, and 34, not argued separately with particularity (see
App. Br. 14; Reply Br. 8-9).
Claim 23
We also sustain the Examiner's rejection of claim 23. Non-Final
Act. 12. Appellants argue that claim 23 is based on the same reasoning as
claim 14' s rejection, and claim 23 's rejection should not be sustained for the
same reasons. App. Br. 16. In arguing against the rejection of claim 14,
Appellants point out that the Examiner takes the position that URL 58 is a
"reference to interactive information" in claim 1 and "interactive
information" in dependent claim 14. App. Br. 14--15. In other words,
Appellants argue that the Examiner takes contradictory positions when
addressing in the rejection of claims 1 and 14. Id.
Yet, claim 23 depends from claim 16, which as discussed above
differs in scope from claim 1 and dependent claim 14. Specifically,
independent claim 16, from which claim 23 depends, contains different
limitations from claim 1 as previously discussed. Among these differences,
claims 16 and 23 recite "web content," not "interactive information," as in
claim 1. As such, Appellants' discussion of the recited language found in
claims 1 and 14 (id.) is not germane to the rejection of claim 23. Non-
Final Act. 12.
Additionally, Appellants' argument is based on an alleged shift in
positions. App. Br. 14--15. But we do not see how the Examiner's
purported shift in position for claim 14 (id.) applies to claim 23 's rejection,
which depends from independent claim 16 and differs in scope.
Specifically, Appellants contend that the Examiner considers URL 58 to be
analogous to the "interactive information." Id. at 9. Appellants analyze the
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rejection of claim 14 under this rationale. See id. at 9-10, 14--15. But given
the variation in scope, we do not see a similar mapping in the rejection of
claim 23. Non-Final Act. 12. As discussed previously, the Examiner maps
the web content in claim 23 to supplemental content or target resource in
Shoff. See Non-Final Act. 9-12.
Even assuming Appellants' argument directed to "interactive
information" of claim 14 applies to "web content" in claim 23, we are not
convinced that the Examiner's rejection contains the same alleged
contradiction. App. Br. 14--15. Specifically, the Examiner maps the web
content to Shoff' s supplemental content or target resource to the "web
content" in claim 23. Non-Final Act. 12 (citing Shoff col. 9, 1.41- col. 10,
1.34 and discussing step 170 of Figure 6). We thus are not persuaded of
error.
Appellants provide additional arguments regarding the limitations
directed to tuning to the referenced television content. Reply Br. 9-10.
Appellants refer to this argument when addressing claim 23. Reply Br. 10.
However, "tuning to the referenced display content" is not found in claim
23.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of claim 23.
THE OBVIOUSNESS REJECTION OVER SHOFF AND ROARTY
We do not sustain the Examiner's rejection of dependent claim 11
(id. at 14--15) for the same reasons discussed above in connection with claim
1. The additional reference, Roarty, was not relied upon to teach the recited
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signal that is missing from Shoff (id. at 15), and, thus, does not cure the
deficiency explained previously.
As for claim 20, which has not been separately argued (see App. Br.
14), we sustain the rejection for the above-stated reasons when addressing
independent claim 16.
REMAINING REJECTIONS
Appellants do not argue the remaining rejections of claims 25-30 and
35-38. Claims 25 and 28 are independent claims, and claims 26, 27, 29, 30,
and 35-38 depend directly or indirectly from one of these claims.
Accordingly, we summarily sustain these rejections. See, e.g., Manual of
Patent Examining Procedure (MPEP) § 1205.02 Rev. 07.2015, 9th ed.,
(Nov. 2015) ("If a ground of rejection stated by the examiner is not
addressed in the appellant's brief, appellant has waived any challenge to that
ground of rejection and the Board may summarily sustain it .... ")
NEW GROUND OF REJECTION
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection for claim 1under35 U.S.C. § 102(e) as
anticipated by Shoff.
Regarding the recited "television interface," Shoff discloses a
television tuner 98. Shoff, col. 10, 11. 19-26, Fig. 5. Shoff s tuner 98
receives a single television signal transmitting both supplemental content
and the video stream. Id. That is, Shoff s video stream (id.) corresponds to
the recited "television information," and this mapped video stream carries
broadcast television shows. Id., col. 4, 11. 18-19.
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Additionally, the hyperlinks in Shoff' s supplemental content (id.,
col. 5, 11. 18-22) correspond to the recited "reference to interactive
information" in the television signal. In particular, Shoff' s supplemental
content includes hyperlinks to other programs. Id. For example, a
"hyperlink" instructs the browser where to find a "target resource." Id.,
col. 5, 11. 37--48. As pointed out by Appellants, the hyperlinks in Shoff's
supplemental content should not be confused with the URL from Shoff' s
EPG. See Reply Br. 5 n.2.
Furthermore, Shoff's target resource (id., col. 5, 11. 45--48)
corresponds to the referenced "interactive information." For example, a
"target resource" can be executable programs, text, multimedia documents,
sound clips, or many other types of interactive content. Id., col. 5, 11. 49-52.
The supplemental data's hyperlink can even refer to other programs. Id.,
col. 5, 11. 18-22. And Shoff's programs are "interactive." See, e.g., id.,
col. 6, 19-26.
Like the recited "interactive information interface," Shoff's modem
100 receives data (e.g., target-resource) from the network. See id., col. 10,
11. 31-33, Fig. 5. Regarding the recited "controller," Shoff's viewer
computing unit 24 (Shoff, Fig. 2), includes a processor that retrieves data
from the network based on the hyperlinks (id., col. 9, 11. 20-29) and controls
the display (id., col. 10, 11. 34--43), as recited in claim 1.
Regarding the recited "cause ... to retrieve" function of the controller,
Shoff' s viewer computing unit 24 processes the links in the hypertext
documents to create the display. Id., col. 9, 11. 27-29. For example,
hypertext documents specify how to render the supplemental content. See
id., col. 12, 11. 49---67. And hypermedia content includes control instructions
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and references to cause the processor to retrieve resources as part of
rendering this content. See id., col. 5. 34--48.
Regarding the "generate" function of the controller, Shoff s viewer
computing unit 24 is implemented as a set-top box unit with a television or a
computer (id., col. 2, 11. 64---66) and generates images for display on a
television or monitor (id., col. 3, 11. 39--42).
As for the recited "presented imagery," Shoff discloses "an interactive
portion containing said interactive information and a television portion
containing said television information." Id., col. 12, 11. 26-34; Fig. 8c. That
is, Shoff s display layout instructions specify how the broadcast program
window-i.e., the "television portion"-is displayed in relation to the
information referred to by supplemental content-i.e., the "interactive
information." Id. For example, the hyperlinks in Shoff s supplemental
content refer to other resources. Id., col. 5, 11. 18-22. These other resources
include interactive information. Id., col. 5, 11. 49-52 (executable programs,
text, multimedia documents, sound clips). This interactive information
relates to and is displayed along with the television portion. Id., col. 11,
11. 61---65; see, e.g., id., Figs. 8b and 8c (showing interactive information
along with television program 210).
Therefore, claim 1 is anticipated by Shoff.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean that the remaining claims are necessarily patentable. Rather, we
merely leave the patentability determination of these claims to the Examiner.
See MPEP § 1213.02.
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DECISION
The Examiner's decision rejecting claims 1, 7, 8, 10, 11, 13-16,
18-21, 23, and 25-39 is affirmed-in-part.
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
for claim 1under35 U.S.C. § 102(e).
Section 37 C.F.R. § 41.50(b) states that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Furthermore, 3 7 C.F .R. § 41. 50(b) also provides that Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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