90009918 (P.T.A.B. Nov. 25, 2013)

Ex Parte 6263505 et al

Patent Trial and Appeal BoardNov 25, 2013

90009918 (P.T.A.B. Nov. 25, 2013)

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. 90/009,918 06/23/2011 6263505 11000361-WDIG-RX918 6587 27571 7590 11/25/2013 Fahmi, Sellers, Embert & Davitz 84 W. Santa Clara St. Suite 550 San Jose, CA 95113 EXAMINER RALIS, STEPHEN J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 11/25/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte WALKER DIGITAL, LLC ________________ Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 Technology Center 3900 ________________ Before HOWARD B. BLANKENSHIP, STANLEY M. WEINBERG, and JEREMY J. CURCURI, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Patent 6,263,505 B1 (Walker) is under reexamination. Appellant appeals under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s rejection of claims 1-64. App. Br. 6. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306, and we heard the appeal on November 6, 2013. Claims 1-13, 15-22, 24, 26-34, 37-46, 49, 50, 57-59, and 60-64 are rejected under 35 U.S.C. § 102(e) as anticipated by Reimer (US 5,559,949; issued Sept. 24, 1996). Ans. 3-22, 31-45. Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 2 Claim 14 is rejected under 35 U.S.C. § 103(a) as obvious over Reimer. Ans. 22-24. Claims 23 and 25 are rejected under 35 U.S.C. § 103(a) as obvious over Reimer and Feinleib (US 6,637,032 B1; issued Oct. 21, 2003). Ans. 24-25. Claim 35 is rejected under 35 U.S.C. § 103(a) as obvious over Reimer and Remillard (US 5,561,709; issued Oct. 1, 1996). Ans. 25-26. Claim 36 is rejected under 35 U.S.C. § 103(a) as obvious over Reimer and Baji (US 5,027,400; issued June 25, 1991). Ans. 26-27. Claims 55 and 56 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 28-30. Claims 55 and 59 are rejected under 35 U.S.C. 112, second paragraph. Ans. 30-31. Claim 51 is rejected under 35 U.S.C. § 103(a) as obvious over Reimer. Ans. 45-46. Claims 47, 48, and 52-54 are rejected under 35 U.S.C. § 103(a) as obvious over Reimer and Feinleib. Ans. 47-53. Claims 55 and 56 are rejected under 35 U.S.C. § 103(a) as obvious over Reimer and Daum (US 5,815,634; issued Sept. 29, 1998). Ans. 53-76. The Examiner has withdrawn earlier rejections of claims 54 and 64 under 35 U.S.C. § 112, first paragraph, and claim 51 under 35 U.S.C. § 305. Ans. 76-77. We affirm. Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 3 STATEMENT OF THE CASE Appellant’s invention relates to providing supplemental information related to video programs. Abstract. Claim 7 is illustrative and reproduced below: 7. A method for providing supplemental information using a data processing apparatus including a CPU and a storage device operatively connected to the CPU and containing a program adapted to be executed by the CPU for processing a request for the supplemental information related to a video program and providing the requested supplemental information, said method comprising the steps of: receiving a request for the supplemental information related to the video program; receiving synchronization information related to the video program; processing the request for the supplemental information by having the CPU in the data processing apparatus execute the program; synchronizing the requested supplemental information to the video program using the synchronization information; and transmitting the requested supplemental information. ANALYSIS THE ANTICIPATION REJECTION OF CLAIMS 1-13, 15-22, 24, 26-34, 37-46, 49, 50, 57-59, AND 60-64 BY REIMER Upon careful review, we find unpersuasive Appellant’s arguments (App. Br. 23-63, 70-74; Reply Br. 5-8) and evidence (App. Br. Evidence Appendix), including both declarations from Andrew Wolfe, that the Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 4 Examiner erred in finding claims 1-13, 15-22, 24, 26-34, 37-46, 49, 50, 57- 59, and 60-64 are anticipated by Reimer (Ans. 3-22, 31-45). Based on the record, we adopt the Examiner’s findings and reasons as our own, and we also adopt the Examiner’s response to Appellant’s Appeal Brief (Ans. 77- 131, 144-150). We concur with the conclusions reached by the Examiner. Accordingly, we sustain the rejection of claims 1-13, 15-22, 24, 26-34, 37- 46, 49, 50, 57-59, and 60-64. We note that we have reviewed both declarations from Andrew Wolfe, and based on the record in its entirety, we are not persuaded of error. We further highlight the following for emphasis. Claim 7 Appellant argues (i) claim 7 requires a single data processing apparatus that performs multiple steps, and Reimer does not describe a single data processing apparatus. App. Br. 23-33. At Oral Hearing, Appellant noted the Examiner’s use of a 2012 dictionary. In response, the Examiner explains the claims do not recite “a single computer or device”, the term “apparatus” includes a set of equipment designed for a particular use, and Reimer (Figures 1 and 2) discloses the claimed apparatus as a set of equipment. Ans. 77-80. The Examiner further explains Reimer discloses that components may be implemented into a single computer. Ans. 80-81 (citing Reimer, col. 6, ll. 45-51). Appellant’s Specification (col. 3, ll. 45-47) states “[t]he present invention also provides an apparatus which integrates the video program and the supplemental information on the same monitor.” Notably, Appellant does not define the term “apparatus” in the Specification, but rather Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 5 describes the integration of the video program and the supplemental information in connection with preferred embodiments. Therefore, a broad, but reasonable, construction of the term “apparatus” is its plain meaning where the term “apparatus” is defined in pertinent sense as “1 a : a set of materials or equipment designed for a particular use.”1 With this definition and construction, we see no error in the Examiner’s reliance on Reimer for describing all limitations of claim 7. The plain meaning of the term “apparatus” does not preclude the “apparatus” from being composed of a set of materials or equipment and therefore multiple components that cooperate to integrate the video program and the supplemental information, such as Reimer’s multiple components (Figures 1 and 2). Further, because we construe claim 7 as not requiring a “single” computer or device, we need not address whether Reimer describes all limitations of claim 7 in a single computer or device. Appellant also argues (ii) that Reimer does not describe the recited “synchronizing the requested supplemental information to the video program using the synchronization information.” App. Br. 33-40. In response, the Examiner explains Reimer’s synchronizing the movie with the display of the movie script describes the recited synchronizing. Ans. 92-93 (citing Reimer, col. 22, ll. 19-49). Appellant’s Specification (col. 6, ll. 2-6) states “[t]hroughout the video program, the viewer receives supplemental images, audio, dialogue, scenes and information synchronized to the specific actions and events 1 Webster’s Ninth New Collegiate Dictionary 96 (1990). Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 6 occurring within the video program.” Notably, Appellant does not define the term “synchronize” in the Specification, but rather describes receiving supplemental information synchronized to the video program in connection with preferred embodiments. Therefore, a broad, but reasonable, construction of the term “synchronize” is its plain meaning where the term “synchronize” is defined in pertinent sense as “1 : to represent or arrange (events) to indicate coincidence or coexistence.”2 With this construction, we see no error in the Examiner’s reliance on Reimer for describing the recited synchronizing. Reimer (col. 22, ll. 22-32) describes First, the time code for the current frame is determined. Second, the row corresponding to the current scene is retrieved from the source table 802. This is done by identifying a scene row in the source table 802 where the current frame time code is greater than or equal to the value of the first frame time code column 806, and less than or equal to the value of the last frame time code column 808. Based on the information contained in this scene row, it is possible to synchronize the display of the movie with the display of the script (the script is retrieved from the foundation information database 112). Reimer arranges the display of the script and the display of the movie to indicate coincidence. Thus, Reimer describes synchronizing the requested supplemental information (Reimer’s script) to the video program using the synchronization information (Reimer’s time code for the current frame), as recited in claim 7. Notably, Reimer’s time code is used in the synchronization process, and the broad claim language does not preclude a finding that Reimer teaches the argued limitation. 2 Webster’s Ninth New Collegiate Dictionary 1197 (1990). Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 7 Claim 12 Appellant argues Reimer does not disclose receiving and processing program identification information, noting that Reimer relies on knowing what program is being displayed. App. Br. 40-43. In response, the Examiner explains Reimer discloses selection from a list of items as selection and reception of the program identification information, and discloses further processing of the program identification information. Ans. 97 (citing Reimer, col. 14, l. 31 - col. 15, l. 60, Figure 9A). We agree with the Examiner. Claim 1 Appellant argues claim 1 requires one single server. App. Br. 45. In response, the Examiner explains a “server apparatus” is an “apparatus” that performs “server functionality” and is described in Reimer. Ans. 103- 105. We agree with the Examiner for similar reasons as discussed above when addressing claim 7. Claims 2 and 8 Appellant argues Reimer does not describe the recited audio and visual information. App. Br. 47-48. In response, the Examiner explains Reimer describes supplemental information including audio and visual information. Ans. 106-108 (citing Reimer, col. 3, l. 33 - col. 4, l. 13; col. 6, ll. 1-7). We agree with the Examiner. Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 8 Claim 3 Appellant argues Reimer does not perform database maintenance. App. Br. 49-50. In response, the Examiner explains Reimer’s index interface component 118 and index information database 122 are relational database management systems, and perform database maintenance. Ans. 108-111. We agree with the Examiner. Claims 4, 9, 21, and 28 Appellant argues Reimer does not describe the recited program identification information. App. Br. 50-53. In response, the Examiner explains Reimer discloses selection from a list of items as selection and reception of the program identification information, and discloses further processing of the program identification information. Ans. 112 (citing Reimer, col. 14, l. 31 - col. 15, l. 60, Figure 9A). We agree with the Examiner. Claims 5, 10, 15, 30, and 33 Appellant argues Reimer does not describe updating the time-code at predetermined intervals. App. Br. 53-55. In response, the Examiner explains Reimer’s user can send a query at any time while viewing or interacting with a movie. Ans. 116 (citing Reimer, col. 16, ll. 15-17). We agree with the Examiner. Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 9 Claims 6, 11, 13, 22, 31, and 37 Appellant argues “Reimer’s teaching to stop watching the supplemental information to request for different supplemental information does not anticipate ‘receiving additional requests from a requestor to interactively change the requested supplemental information based upon the viewed program.’” App. Br. 57. In response, the Examiner again explains Reimer’s user can send a query at any time while viewing or interacting with a movie, and this functionality changes the requested supplemental information. Ans. 121 (citing Reimer, col. 16, ll. 15-17). We agree with the Examiner. Claims 16, 18-20, and 24 Appellant presents arguments similar to those presented for claim 7. App. Br. 57-58. In response, the Examiner refers to the Examiner’s response for claim 7. Ans. 123. Again, we agree with the Examiner. Claim 17 Appellant argues Reimer does not describe an integrated system including the display device and the data processing apparatus. App. Br. 58- 59. In response, the Examiner explains Reimer’s user devices 106 and control component 104 are operatively integrated, and Reimer also discloses that components may be implemented into a single computer. Ans. 123-128. We agree with the Examiner, and in passing note that our conclusion is not inconsistent with the plain meaning of “integrate” which is defined in Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 10 pertinent sense as “1 : to form, coordinate, or blend into a functioning or unified whole.”3 Claims 26, 27, and 29 Appellant presents arguments similar to those presented for claim 7. App. Br. 59. In response, the Examiner refers to the Examiner’s response for claim 7. Ans. 128. Again, we agree with the Examiner. Claims 32, 34, and 38 Appellant presents arguments similar to those presented for claim 4. App. Br. 59-60. In response, the Examiner refers to the Examiner’s response for claim 4. Ans. 128-129. Again, we agree with the Examiner. Claims 39 and 41 Appellant argues claim 39 requires the single server configured for receiving synchronization information, for synchronizing the supplemental information to the video program, and for transmitting the synchronized supplemental information through the data communication network to the data processing system. Appellant argues the rejection of claim 41 should be withdrawn for similar reasons. App. Br. 61. In response, the Examiner explains Reimer et al. discloses a server (column 7, line 66 - column 8, line 11) including a controller and a storage device operatively connected to the controller (Reimer et al.; column 8, lines 40- 50, 55-57). Therefore[,] due to the broadest interpretation of the 3 Webster’s Ninth New Collegiate Dictionary 628 (1990). Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 11 claims, the Examiner maintains the position that Reimer et al. anticipate[s] the system of claims 39 and 41. Ans. 130. We agree with the Examiner for similar reasons as discussed above when addressing claim 7. Claims 40 and 42 Appellant presents arguments similar to those presented for claim 7. App. Br. 61-62. In response, the Examiner refers to the Examiner’s response for claim 7. Ans. 131. Again, we agree with the Examiner. Claim 43 Appellant argues Reimer does not describe the recited program identification information including a code for identifying the program. App. Br. 62-63. In response, the Examiner explains Reimer’s list of items would include titles, etc. that would essentially include a system of symbols for communication. Ans. 131 (citing Reimer, col. 5, ll. 34-54; col. 14, l. 42 - col. 15, l. 5; col. 22, ll. 19-33). We agree with the Examiner. Claim 44 Appellant argues Reimer does not describe providing the movie script and the answer to the query in video. App. Br. 70. In response, the Examiner explains Reimer describes supplemental information being video information. Ans. 145 (citing, Reimer, col. 4, ll. 6-13). We agree with the Examiner. Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 12 Claims 45 and 46 Appellant argues claims 45 and 46 are patentable for the same reasons as claim 7. App. Br. 70. We agree with the Examiner for the same reasons discussed above when addressing claim 7. Claim 49 Appellant argues Reimer does not describe the simulcast event database stored within the storage device as recited in claim 49. App. Br. 71. In response, the Examiner explains Reimer discloses a set of equipment designed for a particular use including a CPU and storage device, and notes Reimer’s databases for describing the simulcast event database. Ans. 146 (citing Reimer, Figures 8, 13A, 13B). We agree with the Examiner. Claim 50 Appellant argues claim 50 is patentable for the same reasons as claims 7 and 12. App. Br. 72. We agree with the Examiner for the same reasons discussed above when addressing claims 7 and 12. Claims 57-59 and 64 Appellant does not separately argue claims 57-59 and 64 with particularity. Claims 60-62 Appellant argues Reimer does not describe synchronizing the requested supplemental information to the video program by directly using Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 13 the synchronization information (time-code). App. Br. 72. In response, the Examiner explains that in Reimer the requested information is retrieved and synchronized to the video program utilizing the first frame time codes. Ans. 147-148 (citing Reimer, col. 20, l. 65 - col. 21, l. 9). We agree with the Examiner. Claim 63 Appellant argues Reimer does not describe receiving program identification information as recited in claim 63. App. Br. 73-74. In response, the Examiner explains Reimer discloses selection from a list of items as selection and reception of the program identification information, and discloses further processing of the program identification information. Ans. 148 (citing Reimer, col. 14, l. 31 - col. 15, l. 60, Figure 9A). We agree with the Examiner. THE OBVIOUSNESS REJECTION OF CLAIM 14 OVER REIMER Upon careful review, we find unpersuasive Appellant’s arguments (App. Br. 63-66) and evidence (App. Br. Evidence Appendix) that the Examiner erred in concluding claim 14 is obvious over Reimer (Ans. 22-24). Based on the record, we adopt the Examiner’s findings and reasons as our own, and we also adopt the Examiner’s response to Appellant’s Appeal Brief (Ans. 131-134). We concur with the conclusion reached by the Examiner. Accordingly, we sustain the rejection of claim 14. In reaching our conclusion, we emphasize that we agree with the Examiner’s explanation (Ans. 132 (citing Reimer, col. 33, ll. 47-49)) that Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 14 Reimer’s “anticipatory buffering” involves the obvious verifying that synchronization is maintained. THE OBVIOUSNESS REJECTION OF CLAIMS 23 AND 25 OVER REIMER AND FEINLEIB Upon careful review, we find unpersuasive Appellant’s arguments (App. Br. 66-68) and evidence (App. Br. Evidence Appendix) that the Examiner erred in concluding claims 23 and 25 are obvious over Reimer and Feinleib (Ans. 24-25). Based on the record, we adopt the Examiner’s findings and reasons as our own, and we also adopt the Examiner’s response to Appellant’s Appeal Brief (Ans. 134-138). We concur with the conclusion reached by the Examiner. Accordingly, we sustain the rejection of claims 23 and 25. In reaching our conclusion, we emphasize that we agree with the Examiner’s conclusion (Ans. 135-137) that insufficient evidence of due diligence has been provided for the period from January 1997 to April 1997. THE OBVIOUSNESS REJECTION OF CLAIM 35 OVER REIMER AND REMILLARD Upon careful review, we find unpersuasive Appellant’s arguments (App. Br. 68) and evidence (App. Br. Evidence Appendix) that the Examiner erred in concluding claim 35 is obvious over Reimer and Remillard (Ans. 25-26). Based on the record, we adopt the Examiner’s findings and reasons as our own, and we also adopt the Examiner’s response to Appellant’s Appeal Brief (Ans. 138-139). We concur with the conclusion reached by the Examiner. Accordingly, we sustain the rejection of claim 35. Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 15 THE OBVIOUSNESS REJECTION OF CLAIM 36 OVER REIMER AND BAJI Upon careful review, we find unpersuasive Appellant’s arguments (App. Br. 69) and evidence (App. Br. Evidence Appendix) that the Examiner erred in concluding claim 36 is obvious over Reimer and Baji (Ans. 26-27). Based on the record, we adopt the Examiner’s findings and reasons as our own, and we also adopt the Examiner’s response to Appellant’s Appeal Brief (Ans. 139). We concur with the conclusion reached by the Examiner. Accordingly, we sustain the rejection of claim 36. THE WRITTEN DESCRIPTION REJECTION OF CLAIMS 55 AND 56 Upon careful review, we find persuasive Appellant’s arguments (App. Br. 69, Reply Br. 9-10) that the Examiner erred in concluding claims 55 and 56 fail to comply with the written description requirement (Ans. 28-30, 139- 142). “[T]he test for sufficiency [of the written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citations omitted). We find the disclosure in the Specification adequate to reasonably convey to those skilled in the art that Appellant had possession of the claimed subject matter recited in claims 55 and 56. In reaching our conclusion, we note our construction of the terms “apparatus” and “integrate” discussed above. Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 16 We, therefore, do not sustain the Examiner’s rejection of claims 55 and 56 under 35 U.S.C. § 112, first paragraph. THE REJECTION OF CLAIMS 55 AND 59 UNDER 35 U.S.C. § 112, SECOND PARAGRAPH Upon careful review, we find persuasive Appellant’s arguments (App. Br. 69, Reply Br. 10) that the Examiner erred in concluding claims 55 and 59 fail to meet the requirements of 35 U.S.C. 112, second paragraph (Ans. 30-31, 142-144). We, therefore, do not sustain the Examiner’s rejection of claims 55 and 59 under 35 U.S.C. § 112, second paragraph. THE OBVIOUSNESS REJECTION OF CLAIM 51 OVER REIMER Appellant argues claim 51 is patentable for the same reasons as claims 7 and 14. App. Br. 74. We agree with the Examiner for the same reasons discussed above when addressing claims 7 and 14. THE OBVIOUSNESS REJECTION OF CLAIMS 47, 48, and 52-54 OVER REIMER AND FEINLEIB Upon careful review, we find unpersuasive Appellant’s arguments (App. Br. 74-76) and evidence (App. Br. Evidence Appendix) that the Examiner erred in concluding claims 47, 48, and 52-54 are obvious over Reimer and Feinleib (Ans. 47-53). Based on the record, we adopt the Examiner’s findings and reasons as our own, and we also adopt the Examiner’s response to Appellant’s Appeal Brief (Ans. 151-155). We Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 17 concur with the conclusion reached by the Examiner. Accordingly, we sustain the rejection of claims 47, 48, and 52-54. In reaching our conclusion, we emphasize that we agree with the Examiner’s conclusion (Ans. 151) that insufficient evidence of due diligence has been provided for the period from January 1997 to April 1997. THE OBVIOUSNESS REJECTION OF CLAIMS 55 AND 56 OVER REIMER AND DAUM Upon careful review, we find unpersuasive Appellant’s arguments (App. Br. 76-77) and evidence (App. Br. Evidence Appendix) that the Examiner erred in concluding claims 55 and 56 are obvious over Reimer and Daum (Ans. 53-76). Based on the record, we adopt the Examiner’s findings and reasons as our own, and we also adopt the Examiner’s response to Appellant’s Appeal Brief (Ans. 156-157). We concur with the conclusion reached by the Examiner. Accordingly, we sustain the rejection of claims 55 and 56. ORDER The Examiner’s decision rejecting claims 1-64 is affirmed. Extensions of time for taking any subsequent action in connection with this appeal are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED Appeal 2013-008233 Reexamination Control 90/009,918 Patent 6,263,505 B1 18 PATENT OWNER: FAHMI, SELLERS, EMBERT, & DAVITZ LLP 84 W. Santa Clara Street Suite 550 San Jose, CA 95113 THIRD PARTY REQUESTER: ANDREW McALEAVEY PATENTBLAST 4600 Adeline Street, #101 Emeryville, CA 94608