Tribune Broadcasting Company, LLC

Patent Trials and Appeals Board

Aug 18, 2021

2020002531 (P.T.A.B. Aug. 18, 2021)

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.
15/345,042 11/07/2016 Hank Hundemer 14-1677-US-CON 9103
146701 7590 08/18/2021
McDonnellBoehnenHulbert&Berghoff LLP/Tribune Media
300 South Wacker Drive, Suite 3100
Chicago, IL 60606
EXAMINER
TRAN, LOI H
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
08/18/2021 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):
docketing@mbhb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HANK HUNDEMER
_____________

Appeal 2020-002531
Application 15/345,042
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
JOHN EVANS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–20, which constitute all the claims pending in this application. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest in this
appeal is the “Tribune Broadcasting Company, LLC (a subsidiary of
Tribune Media Company, which in turn, is a subsidiary of Nexstar
Broadcasting, Inc., which in turn, is a subsidiary of Nexstar Media Group,
Inc.), to which this patent application is assigned.” See Appeal Br. 4.
Appeal 2020-002531
Application 15/345,042

2
STATEMENT OF THE CASE 2
Introduction
Embodiments of Appellant’s claimed subject matter relate generally
to use of program-schedule text and teleprompter output to facilitate
selection of a portion of a media-program recording. See Title; Spec. 1.

Illustrative Claim 1
1. A method comprising:
accessing first data representing a program schedule of a
media program;
[L1] making a determination that first text of the program
schedule is associated with second text displayed by a
teleprompter, wherein a portion of the media program was
recorded proximate a time when the second text was displayed;
using the first text of the program schedule as a basis to
select a portion of the program schedule; and
[L2] responsive to at least the determination, storing data
indicative of a correlation between (i) the selected portion of the
program schedule and (ii) the recorded portion of the media
program.
Appeal Br. 13. Claims App. (disputed claim limitations bracketed as
“L1” and “L2” as argued in the Briefs; the dispositive “wherein”
clause of limitation L1 is emphasized).

2 We herein refer to the Final Office Action, mailed April 1, 2019 (“Final
Act.”); the Advisory Action, mailed June 25, 2019; the Appeal Brief, filed
October 28, 2019 (“Appeal Br.”); the Examiner’s Answer, mailed December
10, 2019, and the Reply Brief, filed February 6, 2020 (“Reply Br.”).
Appeal 2020-002531
Application 15/345,042

3

Prior Art Evidence Relied Upon by the Examiner
Name Reference Date
Parks US 6,038,573 Mar.14, 2000
Worthen US 2008/0292265 A1 Nov. 27, 2008

Table of Rejections
Rejections Claims
Rejected 35 U.S.C. § Reference(s)/Basis
A 1–4, 9–11,
16, 17

102(a)(1)(2) Parks
B 5–8, 12–15,
18–20 103 Parks, Worthen

ISSUES AND ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are forfeited
or waived.3 See, e.g., 37 C.F.R. § 41.37(c)(1)(iv). Throughout this opinion,

3 See In re Google Technology Holdings LLC, 980 F.3d 858, 862 (Fed. Cir.
2020) (some internal citation omitted):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 (1993). “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
Appeal 2020-002531
Application 15/345,042

4
we give the claim limitations the broadest reasonable interpretation (BRI)
consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). We highlight and address specific findings and arguments
for emphasis in our analysis below.

Anticipation Rejection A of Claim 1
In the Appeal Brief, Appellant advances arguments regarding
limitations L1 and L2 of claim 1.
Limitation L1
Appellant notes that the Examiner found that the claimed “first text of
the program schedule” is anticipated by the text “A02 – Mayor,” as
displayed within the “QUEUE AREA 252” (i.e., program schedule) of
Figure 2D of Parks, and that the claimed “second text displayed by a
teleprompter” is anticipated by the word ‘MAYOR’ as displayed within
‘STORY AREA 243’ of Figure 2D. See Appeal Br. 7–8 (citing Final
Action mailed April 1, 2019, at page 5, lines 7–8, and the Advisory Action
mailed June 25, 2019, at page 2, lines 21–22). See also Claim 1.
Appellant disagrees with the Examiner that the broadest reasonable
interpretation of the determination step would only require that the first text
of the program schedule and the text displayed by a teleprompter are
coincident, and that the two items are of the same portion of the media

known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458, 464
(1938)) (additional citations omitted). The two scenarios can
have different consequences for challenges raised on appeal, id.
at 733–34, and for that reason, it is worth attending to which label
is the right one in a particular case.
Appeal 2020-002531
Application 15/345,042

5
program. Appeal Br. 8 (citing Final Action 5 at lines 1–4 and the Advisory
Action 2, at lines 16–18).
Appellant notes that “[c]laim 1 explicitly recites ‘making a
determination that first text of the program schedule is associated with
second text displayed by a teleprompter’ and that data storage is performed
in response to the determination.” Appeal Br. 8 (emphasis added).
Appellant urges that “[i]t is wholly unreasonable to interpret claim 1 as
requiring only that an association exists between the first text of the program
schedule and the second text displayed by a teleprompter” because claim 1
“explicitly requires that a determination act be performed.” Id. (emphasis
added).
Appellant additionally contends that the temporal language recited
within the “wherein” clause of claim 1 is not disclosed by Parks:
In addition, Parks fails to teach [wherein] “a portion of the
media program was recorded proximate a time when the second
text was displayed,” as recited by claim 1. That is, Parks fails
to teach that the text shown in Fig. 2C or Fig. 2D is related to a
media program that has already been recorded or that the
alleged second text has already been displayed by a
teleprompter. Much of the deficiency of Parks is the result of
Parks being related to a conventional news program production
system. Parks states that “[t]he news story markup language of
the present invention provides constraints to define timing
information for a news story, to define machine control
commands that may be used to automate control functions, and
to associate multiple elements within one or more documents/or
the purpose of synchronizing the elements.” Parks at Col. 3.
Ins. 20-26 (emphasis added). Parks is not related to systems or
functionality for analyzing an already recorded media program,
like in claim 1.
Appeal Br. 7–8 (emphasis added).
Appeal 2020-002531
Application 15/345,042

6
Limitation L2
Appellant additionally contends:
Parks doesn’t teach any function that is performed “responsive
to at least the determination,” because Parks does not teach the
recited determination act. Even if Parks did teach the
determination act of claim 1, Parks would still need to teach the
recited data storage act is performed in response to the
determination act.
Appeal Br. 10.

The Examiner’s Response in the Answer
As an issue of claim construction, the Examiner concludes that “a
broadest reasonable interpretation . . . would only require that the first text of
the program schedule and the second text displayed by a teleprompter are
coincident, and that the two items are of the same portion of the media
program.” Ans. 11. The Examiner finds:
Parks also discloses a portion of the media program was
recorded proximate a time when the second text was displayed
(see Parks, col. 8, lines 25-51, the story area 243 contains the
text of the news story that may be displayed on a teleprompter
to be read by an anchor person. A reference mark 245
indicate[s] the place within the story area where a machine
instruction 246 that links to the reference mark should be
executed. The tape 455 is associated with the news story A02.
The news story production is made for broadcasting the A02-
MEYER news story among other news stories; the A02-
MEYER news story was produced proximate a time the
anchorperson reads the teleprompting text of the news story and
proximate a time when playback of recorded content in the
tape 455 was triggered by machine instruction 246 and
incorporated/recorded into the news production).
Ans. 11–12 (emphasis added).
Appeal 2020-002531
Application 15/345,042

7
However, for the reasons discussed infra, we find Appellant’s
contentions are supported by a preponderance of the evidence, at least
regarding the dispositive L1 “wherein” clause limitation of claim 1: i.e.,
“wherein a portion of the media program was recorded proximate a time
when the second text was displayed;” (emphasis added).
We note that a finding that a claim is anticipated under 35 U.S.C.
§ 102 involves two analytical steps. First, we must interpret the claim
language, where necessary. Because the PTO is entitled to give claims their
broadest reasonable interpretation, a court’s review of the Board’s claim
construction is limited to determining whether it was reasonable. In re
Morris, 127 F.3d 1048, 1055 (Fed.Cir.1997). Secondly, the Board must
compare the properly construed claim to a prior art reference and make
factual findings that “‘each and every limitation is found either expressly or
inherently in [that] single prior art reference.’” In re Crish, 393 F.3d 1253,
1256 (Fed. Cir. 2004). Under the doctrine of forfeiture, and on review at the
Board, we need only consider the specific claim limitations that are actually
argued by Appellant. See Google Technology Holdings, 980 F.3d at 862.
At the outset, we find no error with the Examiner’s finding that Parks
discloses the claimed “program schedule of a media program” as mapped to
and read on Park’s Queue Area 252, and the word “MAYOR” (first text) as
shown in Queue Area 252 of Parks’ Figure 2D. We also find no error with
the Examiner’s finding that Parks discloses “second text displayed by a
teleprompter” as mapped to and read on the text displayed within Story Area
234 of Figure 2D, and that there is an association (i.e., some nexus, even an
attenuated nexus) between the first and second text.
Appeal 2020-002531
Application 15/345,042

8
We need not reach the issue of whether Parks expressly or inherently
describes making a determination of such association between the first and
second text,4 because we agree with Appellant (Appeal Br. 7) that Parks fails
to expressly or inherently disclose the temporal language recited within the
“wherein” clause of claim 1: “wherein a portion of the media program was
recorded proximate a time when the second text was displayed;” (emphasis
added).
In particular, we find the Examiner provides no evidence that clearly
discloses when any media program is recorded in Parks. We note the
Examiner’s response refers to the “playback of recorded content in the tape
455 [that] was triggered by machine instruction 246.” Ans. 12.
To satisfy the rigorous requirements of anticipation, the Examiner
must provide an express or inherent description found in Parks showing that
“a portion of the media program was recorded proximate a time when the
second text was displayed,” as required by the temporal language of claim 1,
which the Examiner seems to read out of the claim. (Emphasis added).
Claim 1 also expressly requires that the “second text” is “displayed by a
teleprompter.”
Based upon our review of the record, we find the Examiner’s mapping
regarding the disputed “wherein” clause of claim 1 to the specific
corresponding feature found in Parks is unclear. But the mapping rule
specifically requires: “When a reference is complex or shows or describes
inventions other than that claimed by the applicant, the particular part relied

4 See Beloit Corp. v. Valmet Oy, TVW 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).

Appeal 2020-002531
Application 15/345,042

9
on must be designated as nearly as practicable. The pertinence of each
reference, if not apparent, must be clearly explained and each rejected
claim specified.” 37 C.F.R. §1.104(c)(2) (emphasis added). Moreover, an
agency is bound by its own regulations. See Service v. Dulles, 354 U.S. 363,
388 (1957).
To the extent that the Examiner believes that “machine instruction
246” is a RECORD machine instruction, we find nothing in Parks that
indicates machine instruction 246 is a RECORD machine instruction. See
Ans. 11. Further, “[i]nherency . . . may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given
set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745,
(Fed. Cir. 1999) (internal citations omitted) (emphasis added).
Contrary to the Examiner’s findings (Ans. 11), we find Parks merely
describes playing a tape with a news story — and not when any tape
(“media program”) is recorded: “The TAPE-TIME attribute indicates the
run time in seconds of a tape to be played with a news story. The
PRESENTER attribute indicates the name of the person who will read the
story during the news story broadcast.” Parks col. 13, lines 45–49 (emphasis
added).
This evidence (id.) also strongly supports Appellant’s argument in the
Appeal Brief: “as shown by the ‘BACKTIME’ column of QUEUE AREA
252 of Fig. 2D, Parks teaches that the tape 455 is scheduled for playback one
minute and one second after the start of the news program, and thus is
already recorded.” Appeal Br. 9, ¶ 2.
We thus agree with Appellant that the Examiner has not fully
developed the record by providing sufficient evidence to show “wherein a
Appeal 2020-002531
Application 15/345,042

10
portion of the media program was recorded proximate a time when the
second text was displayed,” as required by the language of claim 1.
Moreover, based upon our review of the drawings and the associated
descriptions found in Parks, we find that to affirm the Examiner on this
record would require speculation on our part as to when any recording was
performed in Parks. We decline to engage in such speculation.
Accordingly, for essentially the same reasons argued by Appellant in
the Briefs regarding the disputed “wherein” clause of claim 1, as further
discussed above, we are constrained on this record to reverse the Examiner’s
anticipation Rejection A of independent claim 1. Because we have reversed
Rejection A of independent claim 1, for the same reasons, we also reverse
Rejection A of independent claims 11 and 17, which each recite the disputed
“wherein” clause limitation of claim 1 using identical language. Because we
have reversed Rejection A for all independent claims on appeal, for the same
reason, we also reverse anticipation Rejection A of associated dependent
claims 2–4, 9, 10, and 16.

Rejection B under § 103 of Dependent Claims 5–8, 12–15, and 18–20
In light of our reversal of Rejection A of independent claims 1, 11,
and 17 supra, we also reverse Rejection B of remaining dependent claims
5–8, 12–15, and 18–20. On this record, the Examiner has not shown how
the secondary Worthen reference overcomes the aforementioned deficiencies
of Parks, as discussed above regarding anticipation Rejection A of
independent claims 1, 11, and 17.

Appeal 2020-002531
Application 15/345,042

11
CONCLUSIONS
The Examiner erred in rejecting claims 1–4, 9–11, 16, and 17 under
35 U.S.C. § 102 over Parks.
The Examiner erred in rejecting claims 5–8, 12–15, and 18–20 under
35 U.S.C. § 103 over the collective teachings and suggestions of Parks and
Worthen.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 9–11,
16, 17

102(a)(1)(2) Parks
1–4, 9–11,
16, 17

5–8, 12–15,
18–20 103 Parks, Worthen
5–8, 12–15,
18–20
Overall
Outcome
1–20
REVERSED