Dan Holden

Patent Trials and Appeals Board

Dec 3, 2021

2020004334 (P.T.A.B. Dec. 3, 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.
12/834,484 07/12/2010 Dan Holden 007412.01022 8576
71867 7590 12/03/2021
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
PENG, HSIUNGFEI
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
12/03/2021 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 DAN HOLDEN
________________

Appeal 2020-004334
Application 12/834,484
Technology Center 2400
________________

Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1, 4–9, 14, 18–25, and 29–32.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The invention relates to transmitting signals from a content
origination source for inserting interactive television data into a transport

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Comcast Cable Communications,
LLC is the real party in interest. Appeal Br. 1.
2 Claims 2, 3, 10–13, 15–17, and 26–28 are cancelled. Appeal Br. 1–4
(Claims Appendix).
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stream. Spec. ¶ 1. Claim 1 is illustrative of the invention and is reproduced
below:
1. A method comprising:
receiving, by a computing device, a control signal
associating a first multimedia identifier, of a plurality of
multimedia identifiers representing multimedia content, with a
first application data identifier, of a plurality of application data
identifiers representing interactive application data to be output
with multimedia content;
receiving, by the computing device, a first stream
comprising a plurality of video packets, wherein the plurality of
video packets comprise one of the plurality of multimedia
identifiers;
based on a determination that at least one video packet of
the plurality of video packets comprises the first multimedia
identifier, determining an application packet comprising the first
application data identifier, associated with the first multimedia
identifier, by monitoring a second stream comprising application
packets of a plurality of interactive applications;
generating a third stream by encoding data of the at least
one video packet comprising the first multimedia identifier and
interactive application data of the application packet comprising
the first application data identifier; and
outputting the third stream.
Appeal Br. 1 (Claims Appendix) (emphasis added).

REJECTIONS
The Examiner rejects claims 1, 5, 14, 19, 21, 23, and 29–32 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Candelore
(US 2009/0022165 A1; published Jan. 22, 2009) and Slattery (US
6,111,896; issued Aug. 29, 2000). Final Act. 2–8.
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The Examiner rejects claims 4, 7, 18, 22, and 25 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Candelore, Slattery,
and Hasek (US 2009/0217326 A1; published Aug. 27, 2009). Final Act. 8–
10.
The Examiner rejects claims 6, 20, and 24 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Candelore, Slattery, Lajoie (US
2011/0107379 A1; published May 5, 2011), and Hasek. Final Act. 10–11.
The Examiner rejects claims 8 and 9 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Candelore, Slattery, and Lajoie.
Final Act. 11–14.
ANALYSIS
The Examiner finds Candelore teaches a viewer makes a selection of
programming at multiple times during the streaming of a movie when it is
determined if a substitution criterion has been met, which the Examiner
maps to the limitation “determining an application packet comprising the
first application data identifier, associated with the first multimedia
identifier, by monitoring a [] stream comprising application packets of a
plurality of interactive applications” recited in claim 1. Ans. 16 (citing
Candelore ¶¶ 33, 132); Final Act. 2–4 (citing Candelore ¶¶ 23, 25, 26, 28,
29, 122). Moreover, the Examiner concludes that a person having ordinary
skill in the art (hereinafter “PHOSITA”) at the time of the invention would
have combined Candelore and Slattery to obtain content from other sources.
Final Act. 6.
Appellant argues Candelore fails to teach the italicized limitation from
above because Candelore merely teaches a single interactive application.
Appeal Br. 3–4; Reply Br. 2–4. In addition, Appellant argues a PHOSITA
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would not combine Candelore’s single ordered stream of packets containing
video content having a first main movie and one or more alternative scenes
stream as the programming content with Slattery’s separate stream, because
one would not scatter alternative endings into separate streams only to
require recombination before presentation to the user. Appeal Br. 4–9;
Reply Br. 3–6. We disagree with Appellant.
Candelore describes a viewer makes a selection (i.e., the viewer is
making a selection of alternative content at multiple times during a movie,
such as stated in paragraph 28 of Candelore and Figure 5 of Candelore,
which describes the limitation “a plurality of interactive applications”
because there are different selection menus presented during the movie for
the viewer to choose different alternative content). Ans. 16 (citing
Candelore ¶¶ 33, 132); Final Act. 2–4 (citing Candelore ¶¶ 23, 25, 26, 28,
29, 122). Candelore describes a viewer making a selection of programming
at multiple instances of insertion points during the streaming of a movie (i.e.,
first multimedia identifier). Ans. 16 (citing Candelore ¶¶ 33, 132); Final
Act. 2–4 (citing Candelore ¶¶ 23, 25, 26, 28, 29, 122).
Candelore’s viewer makes the selection when it is determined if a
substitution criterion has been met (i.e., determining an application packet
comprising the first application data identifier, associated with the first
multimedia identifier), which describes the limitation “determining an
application packet comprising the first application data identifier, associated
with the first multimedia identifier, by monitoring a [] stream comprising
application packets of a plurality of interactive applications” recited in claim
1. Ans. 16 (citing Candelore ¶¶ 33, 132); Final Act. 2–4 (citing Candelore
¶¶ 23, 25, 26, 28, 29, 122); see also Candelore, Fig. 5 (multiple insertion
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points for content during a movie).
Appellant’s argument that a PHOSITA would not combine Candelore
and Slattery because one would not scatter alternative endings into separate
streams only to require recombination before presentation to the user is
unavailing. Appeal Br. 4–9; Reply Br. 3–6. We note the test for
obviousness is what the combined teachings of the references would have
suggested to a person of ordinary skill in the art, not whether one reference
may be bodily incorporated into the structure of another reference. In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
Furthermore, to the extent that Appellant has provided written
description support for the limitation “monitoring,”3 we agree with the
Examiner’s conclusion that a PHOSITA would have combined Candelore
and Slattery to obtain content from other sources. Final Act. 6.
Appellant does not argue claims 4–9, 14, 18–25, and 29–32 separately
with sufficient particularity. Appeal Br. 3–11. Accordingly, we sustain the
Examiner’s rejection of: (1) independent claims 1, 14, and 21; and
(2) dependent claims 4–9, 18–20, 22–25, and 29–32 under 35 U.S.C.
§ 103(a).
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to

3 Paragraphs 49–54 of Appellant’s Specification do not appear to provide
adequate written description support for “monitoring.” Spec. ¶¶ 49–54. It is
well settled that a description that merely renders the invention obvious does
not satisfy the written description requirement. See Ariad Pharm., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc). Although the
Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
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make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION

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). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5, 14, 19,
21, 23, 29–
32
103(a) Candelore, Slattery 1, 5, 14, 19,
21, 23, 29–
32

4, 7, 18, 22,
25
103(a) Candelore,
Slattery, Hasek
4, 7, 18, 22,
25

6, 20, 24 103(a) Candelore,
Slattery, Lajoie,
Hasek
6, 20, 24
8, 9 103(a) Candelore,
Slattery, Lajoie
8, 9
Overall
Outcome
1, 4–9, 14,
18–25, 29–
32