COMCAST CABLE COMMUNICATIONS, LLC

Patent Trials and Appeals Board

Apr 15, 2021

2019006878 (P.T.A.B. Apr. 15, 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.
13/671,626 11/08/2012 Derek Johnson 007412.01673 3325
71867 7590 04/15/2021
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
GOFMAN, ALEX N
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
04/15/2021 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):
PTO-71867@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DEREK JOHNSON

______________________

Appeal 2019-006878
Application 13/671,626
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JOHNNY A. KUMAR,
CATHERINE SHIANG, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the final rejection
of claims 1–2, 7–9, 24–25, and 27–41, which constitute all pending claims

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2019). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies Comcast Cable Communications, LLC, as the real party in interest
(Appeal Br. 2).
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on appeal. Claims 3–6, 10–23, and 26 have been canceled (see Appeal Br.
16–17 (Claims App.)). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

DISCLOSED AND CLAIMED INVENTION
Appellant’s disclosed and claimed invention facilitates “acquiring
data, such as metadata, and associating the metadata with content . . . they
are consuming using their own user devices” (Spec. ¶ 2). An example of
such a user device is a tablet computer, which can be used to view a
webpage related to the content they are consuming (see Spec. ¶ 1). This
webpage can collect and contain significant amounts of data related to the
content (see Spec. ¶ 1). Accordingly, there exists a need to gather, organize,
and display related information of interest on the webpage (see Spec. ¶ 1).
Accordingly, Appellant’s disclosed invention, entitled
“Crowdsourcing Supplemental Content” (Title), is directed to leveraging
“users, such as subscribers or ordinary consumers (e.g., the ‘crowd’), . . . to
generate and organize metadata content for enhancing consumption of
primary content” (Spec. ¶ 3).
Appellant claims a “method” (claims 1, 31, and 36), each reciting
operations between a computing system and a user device, to generate
metadata related to user-provided data associated with primary content (see
claims 1, 31, and 36). Claim 1 is illustrative of the claimed subject matter:
1. A method comprising:
receiving, by a computing system and from a user device:
a sample of audio indicating a first time point
associated with a portion of primary content that is being
presented;
user-provided data; and
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a request to associate the user-provided data with
the first time point;
determining, by the computing system and based on the
sample of audio, a first image from the primary content and
associated with the first time point;
sending, by the computing system and to the user device,
the first image and a request for confirmation that the user-
provided data is to be associated with the first time point;
receiving, by the computing system, from the user device,
and after sending the request confirmation, a request to associate
the user-provided data with a modified time point, offset from
and instead of the first time point; and
generating, by the computing system and based on the
request to associate the user-provided data with the modified
time point, metadata that associates the user-provided data with
the modified time point.

Appeal Br. 15, Claims App. (emphases added).

REJECTION
The Examiner made the following rejections:
Claims 1–2, 9, 24, 25, and 31–35 stand rejected under 35 U.S.C. § 103
as being unpatentable over Slavin et al. (US 2013/0111514 A1; published
May 2, 2013) (hereinafter, “Slavin”), McIntire et al. (US 2007/0250901 A1;
published Oct. 25, 2007) (hereinafter, “McIntire”), and Weng et al. (US
2006/0233514 A1, published Oct. 19, 2006) (hereinafter, “Weng”).2 Claims
27 and 28 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Slavin, McIntire, Weng, and Dunnigan et al. (US 2009/0249427 A1,
published Oct. 1, 2009) (hereinafter, “Dunnigan”). Claims 29 and 30 stand

2 For the purpose of this Appeal, we consider the Examiner’s inadvertent
mistake of not listing claim 24 in the statement of the rejection of the Final
Action as harmless. (See Ans.3; Reply Br. 2)
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rejected under 35 U.S.C. § 103 as being unpatentable over Slavin, McIntire,
Weng, and Carlyle et al. (US 2002/0156890 A1, published Oct. 24, 2002)
(hereinafter “Carlyle”). Claims 36–41 stand rejected under 35 U.S.C. § 103
as being unpatentable over Slavin and McIntire. Claim 7 stands rejected
under 35 U.S.C. § 103 as being unpatentable over Slavin, McIntire, Weng,
and Lang et al. (US 2002/0120609 A1, published Aug. 29, 2002)
(hereinafter “Lang”). Claim 8 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Slavin, McIntire, Weng, Lang, and Xu et al. (US
2007/0112761 A1, published May 17, 2007) (hereinafter “Xu”). Final Act.
3–18.

ISSUE
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 4–
12) and Reply Brief (Reply Br. 2–5), the following principal issue is
presented on appeal:
Did the Examiner err in rejecting claims 1–2, 7–9, 24, 25, and 27–41
under 35 U.S.C. § 103 as being unpatentable over the combination of, inter
alia, Slavin and McIntire, because there is not proper motivation to combine
Slavin and McIntire?

ANALYSIS
We have reviewed the Examiner’s rejection (see Final Act. 3–18) in
light of Appellant’s arguments that the Examiner has erred (see Appeal Br.
4–12; Reply Br. 2–5), as well as the Examiner’s response to Appellant’s
arguments in the Appeal Brief (see Ans. 3–6). Appellant’s contentions that
the Examiner has not provided a sufficient motivation to combine Slavin and
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McIntire (see Appeal Br. 6–12; Reply Br. 2–5) are persuasive. We provide
the following explanation for emphasis.
“If all elements of a claim are found in the prior art, as is the case here,
the factfinder must further consider the factual questions of whether a person
of ordinary skill in the art would be motivated to combine those references.”
Dome Patent L.P. v. Lee, 799 F.3d 1372, 1380 (Fed. Cir. 2015); see also
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”). “[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” KSR, 550 U.S. at 418; see also Metalcraft
of Mayville, Inc., v. The Toro Co., 848 F.3d 1358, 1367 (2017) (Fed. Cir.
2017) (“Without any explanation as to . . . why the references would be
combined to arrive at the claimed invention, we are left with only hindsight
bias that KSR warns against. [W]e cannot allow hindsight bias to be the
thread that stitches together prior art patches into something that is the
claimed invention.”). The PTAB must make a finding of a motivation to
combine when it is disputed. See In re Nuvasive, 842 F.3d 1376 (Fed. Cir.
2016). “The factual inquiry whether to combine references must be thorough
and searching and the need for specificity pervades our authority on the
findings on motivation to combine.” Id. at 1381–82 (internal quotation
marks and citation omitted).
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
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between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal
quotation marks and citations omitted); see also Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an
administrative agency, the PTAB “must articulate logical and rational
reasons for [its] decisions.”) (internal quotation marks and citations
omitted). We will not resort to speculation or assumptions to cure
deficiencies in the Examiner’s fact finding or reasoning. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967).
With this background in mind, we turn to the Examiner’s rejection.
There is no dispute as to the relevant teachings of Slavin and McIntire. It is
not disputed that (i) Slavin teaches receiving, by a computing system and
from a user device, sample of audio indicating a first time point associated
with a portion of primary content that is being presented (see Final Act. 3,
citing Slavin ¶¶ 122–123); and (ii) McIntire teaches receiving, by a
computing system and from a user device, user-provided data and a request
to associate the user-provided data with a first time point (see Final Act. 3–4,
citing McIntire ¶¶ 145, 208, 223, 231, 272, and 413). Based on Appellant’s
arguments (see Appeal Br. 4–12; Reply Br. 2–5), the dispositive issue is
whether a person of ordinary skill in the art would have been motivated to
combine the various teachings found in the prior art in the manner done so
by Appellant. In other words, has the Examiner articulated a satisfactory
explanation for its action including a rational connection between the facts
found and the choice made?
Here, we agree with Appellant’s contentions that the Examiner has
not provided the requisite rationale for combining the teachings of Slavin
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and McIntire (see Appeal Br. 7–11; Reply Br. 3–5). Regarding the
motivation for combining Slavin and McIntire, the Examiner provides the
following rationale:
[I]t would have been obvious for one of ordinary skill in
the art at the time the invention was made to modify Slavin with
McIntire . . . . One would have been motivated to do so in order
to [: (1)] let a viewer create and verify certain supplemental
content for other viewers; [or (2) allow] a user to be able to
modify a media stream with user content.
Final Act. 5; Ans. 6. The first portion of this rationale is conclusory and
circular. The second portions are insufficient, as they do not address how or
why a person having ordinary skill in the art would modify McIntire’s
system, which already has an effective manner of identifying a point in time
in the primary content with which to associate user-provided data (see
McIntire ¶¶ 88, 277, Figs. 20, 27, discussing “Segment ID” and its use), with
Slavin’s manner of sampling audio in the primary content to identify a point
in time in the primary content with which to associate the user-provided
data.
Although we agree with the Examiner that “both Slavin and McIntire
disclose identifiers to identify points in time of content” (Ans. 5), there
would be no need to modify McIntire’s “Segment ID” system, because the
“Segment ID” system is “computationally simpler than conventional product
placement markup techniques . . . [and] is more cost effective than known
techniques for associating supplemental content with media streams”
(McIntire ¶ 144). In other words, McIntire already has a simple, cost-
effective, and flexible means to identify points in time of primary content.
Further, the audio fingerprinting system of Slavin is used in a fundamentally
different manner than the Segment ID system of McIntire: in Slavin, the
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audio fingerprinting system is used to identify when a user-device receives
from the computing system data previously associated with the point in time
of primary content (Slavin ¶¶ 122–123), while in McIntire, the Segment ID
system is used to identify when the computing system receives from the
user-device data to associate presently with the point in time of primary
content (McIntire ¶ 277, Fig. 27). In addition, the Examiner has not
explained why one having ordinary skill in the art would have been
motivated to deploy the audio fingerprinting system of Slavin in place of the
Segment ID system of McIntire without resorting to hindsight reasoning.
In other words, the Examiner’s reasoning is too general and is not
tailored to explaining why one skilled in the art would have seen the benefit
of using Slavin’s audio fingerprints in place of McIntire’s Segment ID’s, to
identify a point in time in primary content with which to associate user-
provided data. See KSR, 550 U.S. at 424 (“[t]he proper question to have
asked was whether a . . . designer of ordinary skill . . . would have seen a
benefit to upgrading Asano with a [feature from the secondary reference]”).
As a result, the Examiner has not provided “some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness,”
as required by KSR. See KSR, 550 U.S. at 418.
Based on the foregoing, we find that the Examiner has not properly
established articulated reasoning with a rational underpinning to support the
legal conclusion of obviousness for claims 1, 31, and 36, resulting in a
failure to establish a prima facie of obviousness. Thus, Appellant has
overcome the Examiner’s prima facie case of obviousness with respect to
independent claims 1, 31, and 36. As a result, Appellant has shown the
Examiner erred in rejecting claims 1–2, 7–9, 24, 25, and 27–41 under
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35 U.S.C. § 103 as being unpatentable over the combination of, inter alia,
Slavin and McIntire.

DECISION
For the reasons explained above, we do not sustain the rejection of
claims 1–2, 7–9, 24, 25, and 27–41 under 35 U.S.C. § 103 as being
unpatentable over the combination of, inter alia, Slavin and McIntire.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–2, 9, 24,
25, 31–35
103 Slavin, McIntire,
Weng
1–2, 9,
24, 25,
31–35
27, 28 103 Slavin, McIntire,
Weng, Dunnigan
27–28
29, 30 103 Slavin, McIntire,
Weng, Carlyle
29–30
36–41 103 Slavin, McIntire 36–41
7 103 Slavin, McIntire,
Weng, Lang
7
8 103 Slavin, McIntire,
Weng, Lang, Xu
8
Overall
Outcome
1–2, 7–9,
24, 25,
27–41

REVERSED