Ex Parte Yoon et alDownload PDFPatent Trial and Appeal BoardFeb 26, 201411709170 (P.T.A.B. Feb. 26, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JUNG-MIN YOON, JUN-HYEONG KIM, JAE-WOO KO, JOUNG-HOON CHOO, and SANG-DO PARK ____________ Appeal 2011-011929 Application 11/709,170 Technology Center 2400 ____________ Before JEAN R. HOMERE, ST. JOHN COURTENAY III, and ELENI MANTIS MERCADER, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011929 Application 11/709,170 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION Appellants’ claimed invention is directed to providing available codec information based on received Electronic Program Guide (EPG) data and displaying the position information of the codec. See Spec. ¶ [17]. Independent claims 1 and 5 reproduced below are representative of the subject matter on appeal. 1. An apparatus for providing available codec information, the apparatus comprising: a receiving unit that receives electronic program guide (EPG) data transmitted by a broadcasting operator; a codec-management unit that checks position information of a codec based on the EPG data received by the receiving unit, and manages a point of time of downloading of the codec; an interface-generation unit that generates the position information of the codec, and provides the position information to an EPG screen; and a display unit that displays the EPG screen including the position information of the codec. 5. A method of providing available codec information, the method comprising: receiving, at a multimedia-reproduction device, electronic program guide (EPG) data transmitted by a broadcasting operator; parsing the received EPG data and extracting codec information from the parsed EPG data; checking position information of a codec based on the extracted codec information; and providing the extracted codec information and the position information of the codec to an EPG screen. Appeal 2011-011929 Application 11/709,170 3 REFERENCES and REJECTIONS 1. Claims 5-11 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claims 1-8 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Corl (U.S. Patent App. Pub. 2002/0035726 A1; Mar. 21, 2002) in view of Kenner (U.S. Patent 6,314,565 B1; Nov. 6, 2001). 3. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Corl in view of Kenner, and further in view of Alperovich (U.S. Patent 6,600,738 B1; July 29, 2003). ISSUES The issues are whether the Examiner erred: 1. in concluding that claim 5 is directed to a patent ineligible process under 35 U.S.C. § 101; and 2. in finding the combination of Corl and Kenner teaches or suggests the limitation of “a codec-management unit that checks position information of a codec based on the EPG data received by the receiving unit, and manages a point of time of downloading of the codec” as recited in claim 1 and similarly recited in claim 5. ANALYSIS Claims 5-11 rejected under 35 U.S.C. § 101 Appellants argue that the claim 5 process is patent eligible under 35 U.S.C. § 101 because it is tied to another statutory class (App. Br. 9). Appeal 2011-011929 Application 11/709,170 4 Appellants argue that the recited multimedia-reproduction device is an apparatus (App. Br. 9-10). Appellants further direct our attention to their Specification, which clearly recites that the multimedia-reproduction device is a digital television DTV (Spec. ¶ [38]). The machine-or-transformation test asks whether a claimed process is: (1) tied to a particular machine or apparatus or (2) transforms a particular article into a different state or thing (Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010)). The Supreme Court clarified in Bilski that the machine-or- transformation test “is not the sole test for deciding whether an invention is a patent-eligible process under § 101;” however, it remains a “useful and important clue or investigative tool.” Bilski, 130 S.Ct. at 3221; see also Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1296 (2012). Here, we agree with Appellants that the method of claim 5 is tied to a machine because we agree the recited “multimedia-reproduction device” falls squarely within the statutory class of a machine. (Claim 5). However, the machine-or-transformation test is not dispositive of our § 101 inquiry. If the “acts” of a claimed process manipulate only numbers, abstract concepts or ideas, or signals representing any of the foregoing, the acts are not being applied to appropriate subject matter. See Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972). “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Moreover, if a method can be performed by human thought alone, or by a human using pen and paper, it is merely an Appeal 2011-011929 Application 11/709,170 5 abstract idea and is not patent-eligible under § 101. Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1372-73 (Fed. Cir. 2011). On this record, the Examiner has not shown, and we do not conclude, that the method of claim 5, when considered as a whole, is directed to manipulating non-statutory phenomena of nature, mental processes, abstract intellectual concepts, or signals representing the same. Whether the recited acts of: (1) parsing EPG data, (2) checking position information, and (3) providing extracted codec and position information to an EPG screen, are equivalent to manipulating a signal (EPG data) representing an abstract idea is a close question. However, when we consider that the method of claim 5 is tied to a machine (“multimedia- reproduction device), and consider the scope of the claim as a whole, we conclude the Examiner’s finding that a person could perform the steps of the method (Ans. 4) is an overly broad and unreasonable interpretation of method claim 5, which is also inconsistent with Appellants’ Specification (See App. Br. 10). Accordingly, we reverse the Examiner’s rejection of claim 5 under 35 U.S.C. § 101, and for the same reasons the § 101 rejection of dependent claims 6-11. Appeal 2011-011929 Application 11/709,170 6 Claims 1-11 rejected under 35 U.S.C. § 103 Appellants argue that, contrary to the Examiner’s findings, Corl does not teach “a codec-management unit that checks position information of a codec based on the EPG data received by the receiving unit” and Kenner does not teach “a codec-management unit that . . . manages a point of time of downloading of the codec” as recited in claim 1 and similarly recited in claim 5 (App. Br. 13-17). We do not agree with Appellants. We agree with the Examiner’s findings that Corl teaches metadata generated and displayed based on the EPG data (¶¶ [0008]-[0011]; Ans. 6). Corl teaches metadata structure that provides data and/or a link to such data used by an EPG generator in a DTV receiver to display visually compelling information based on an EPG event (¶ [0008]). Corl further teaches metadata such as an icon associated with a broadcaster of the event and/or the source of the event, a graphic representing the rating or content of the event, a still image having a relation to the event, or an advertisement related to the event (¶¶ [0008], [0019]- [0020]) each of which may be of different file format (¶ [0020]). These different file formats ASCII, HTML, XML, and MPEG of the events necessarily require different codec to allow the respective event’s display (¶¶ [0019]-[0020]). Thus, Corl teaches the generation and display of metadata based on EPG data. The Examiner need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005), aff’d, slip op. 06-1003 (Fed. Appeal 2011-011929 Application 11/709,170 7 Cir. (June 2006) (Rule 36). Accordingly, and as noted by the Examiner (Ans. 18), the particular type of metadata of “position information of a codec” as recited in claims 1 and 5 only differs in terms of the type of data and constitutes non-functional descriptive material and does not limit the current invention. Nevertheless, Kenner teaches determining whether a particular codec is available at a user terminal, and if not, allowing the user to install the corresponding codec from different network locations (i.e., position information of a codec) (col. 6, ll. 16-55, Ans. 16-17). Thus, Kenner explicitly teaches allowing the user the opportunity to select the desired codec from different locations. Accordingly, it would have been obvious to one skilled in the art at the time of the invention to substitute the metadata as taught by Corl based on the EPG data with the particular metadata of Kenner of displaying to the user available codec information and their respective locations allowing the user to select the appropriate codec for the EPG event or even for the EPG triggered metadata such as a commercial that also needs codec to be displayed on the screen (see Ans. 7). Appellants further argue that the supporting evidence of the Examiner’s Official Notice does not teach position information of codecs (App. Br. 19). We note that the Official Notice was not adequately traversed by Appellants because they did not specifically point out why the noticed fact is not considered to be common knowledge or well-known in the art (MPEP § 2144.03 C). Accordingly, we affirm the Examiner’s rejections of claims 1 and 5 and for the same reasons the rejections of claims 2-4 and 6-11. Appeal 2011-011929 Application 11/709,170 8 CONCLUSIONS 1. The Examiner erred in concluding that claim 5 is a patent ineligible process under 35 U.S.C. § 101; and 2. the Examiner did not err in finding that the combination of Corl and Kenner teaches the limitation of “a codec-management unit that checks position information of a codec based on the EPG data received by the receiving unit, and manages a point of time of downloading of the codec” as recited in claim 1 and similarly recited in claim 5. DECISION We affirm the Examiner’s obviousness rejections under §103 of claims 1-11. However, we reverse the Examiner’s nonstatutory subject matter rejection under § 101 of claims 5-11. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). 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 bab Copy with citationCopy as parenthetical citation