Ex Parte Ben et al

Patent Trial and Appeal Board

Aug 1, 2013

10629486 (P.T.A.B. Aug. 1, 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.
10/629,486 07/29/2003 Jan I. Ben Ben 2-16-1-10 7452
46363 7590 08/01/2013
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
SAINT CYR, LEONARD
ART UNIT PAPER NUMBER
2658
MAIL DATE DELIVERY MODE
08/01/2013 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 JAN I. BEN, CHRISTOPHER J. BURGES,
MADJID SAM MOUSAVI, and CRAIG R. NOHL
____________

Appeal 2011-001911
Application 10/629,486
Technology Center 2600
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-19, 21-30, 32-37, and 41-45. Claims 20, 31, and 38-40 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2011-001911
Application 10/629,486

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STATEMENT OF THE CASE
Appellants’ claimed invention is related to "the art of identifying the
content of a particular media program." (Spec. 1:2-3).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method for program content identification, said
method comprising:

for each of at least two media program subsets,
performing the steps of:

filtering each first frequency domain representation of
blocks of a media program subset using a plurality of filters to
develop a respective second frequency domain representation of
each of said blocks of said media program subset, said second
frequency domain representation of each of said blocks having
a reduced number of frequency coefficients with respect to said
first frequency domain representation, said plurality of filters
having center frequencies logarithmically spaced apart from
each other substantially in accordance with a logarithmic
additive factor of 1/12;

grouping frequency coefficients of said second frequency
domain representation of said blocks to from segments;

selecting a plurality of said segments; and

comparing selected segments to features of stored
programs to identify thereby said media program subset; and

determining whether said subsequent media program
subset exhibits similarities to said initial media program subset.

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Application 10/629,486

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REFERENCES and REJECTIONS
The Examiner rejected claims 1-19, 21-30, 32-37, and 41-45 under 35
U.S.C. § 103(a) based upon the teachings of Weare (US 7,065,416 B2),
McEachern (US 5,615,302), and Logan (US 6,633,845 B1).
The Examiner rejected claims 22, 23, 35, and 36 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. (Final Rej. 3). However, the rejection is not repeated in the
Examiner's Answer. The Examiner did not expressly withdraw the rejection,
so we will address Appellants' arguments (App. Br. 20-21) for completeness.

ANALYSIS
35 U.S.C. § 112
The Examiner stated in the Final Rejection that Appellants'
Specification does not provide written description support for the "means for
grouping," "means for searching a database," and "means for determining."
(Final Rej. 3). Appellants contend the Specification at page 5 recites:
"In the claims hereof any element expressed as a means for
performing a specified function is intended to encompass any
way of performing that function including, for example, a) a
combination of circuit elements which performs that function or
b) software in any form, including, therefore, firmware,
microcode or the like, combined with appropriate circuitry for
executing that software to perform the function. The invention
as defined by such claims resides in the fact that the
functionalities provided by the various recited means are
combined and brought together in the manner which the claims
call for. Applicant thus regards any means which can provide
those functionalities as equivalent as those shown herein."

Appeal 2011-001911
Application 10/629,486

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(App. Br. 21). While we agree the content of the Specification contains the
same recitations of functions (words), we find no corresponding structure,
acts, or materials and corresponding algorithms with which to perform the
recited functions as far as "Applicant thus regards any means which can
provide those functionalities as equivalent as those shown herein." Clearly,
Appellants have not evidenced possession of all possible equivalents on all
corresponding types of recited generic hardware as identified in the
Specification. Therefore, we find Appellants have not provided written
description support as identified for this range of equivalents.1
35 U.S.C. § 103
With respect to independent claim 1, Appellants contend the
Examiner fails to establish a prima facie showing of obviousness because the
combination of references fails to teach or suggest all the claimed elements.
(App. Br. 11-12). Appellants further contend all the words in the claims
must be considered. (App. Br. 12). Appellants maintain that "the Examiner
does not accord any patentable weight to phrases such as 'first frequency
domain' and 'second frequency domain.'" (App. Br. 12). Appellants further
contend neither McEachern nor Logan cures Weare's deficiencies. (App. Br.

1 While we affirm this rejection, we note the more appropriate rejection is
under 35 U.S.C. § 112, second paragraph. Since the Specification provides
no clear corresponding structure, acts, or materials including the
algorithm(s) to perform the recited functions, the scope of the claimed
means plus function limitations should be evaluated by the Examiner. Under
35 U.S.C. § 112 ¶ 2 and ¶ 6, a means-plus-function clause is indefinite if a
person of ordinary skill in the art would be unable to recognize the structure
in the specification and associate it with the corresponding function in the
claim. Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381-82
(Fed. Cir. 1999). We leave it to the Examiner to consider a rejection under
§112, second paragraph in the event of further prosecution.
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13). Appellants finally contend the Examiner has relied upon hindsight
analysis and conclusory statements and has not met the burden of showing
some articulated reasoning with some rational underpinning to support the
legal conclusions of obviousness. (App. Br. 13-14). We disagree with each
of Appellants' contentions with respect to the representative claim 1.
We find the Examiner has addressed the prior art teachings of the
three references applied in the statement of the rejection (Ans. 3-6) and
responded to Appellants' arguments in the response to arguments section.
(Ans. 20-23). We agree with the Examiner's findings and adopt them as our
own.
Appellants' Reply Brief does not specifically address the Examiner's
findings with respect to independent claim 1. Therefore, Appellants have
not shown error in the Examiner's reasoned conclusion of obviousness of
representative claim 1, and we sustain the rejection thereof.
With respect to dependent claims 2-19, 41, and 42, Appellants rely
upon the arguments advanced with respect to independent claim 1. (App.
Br. 15). Therefore, we group these claims as falling with their representative
parent claim.
With respect to independent claims 21 and 37, Appellants maintain
the same contentions in the Appeal Brief (App. Br. 15-16) and further
maintain that the Examiner's assertions do not support the conclusion of
obviousness with respect to the "30 minutes" limitation. (Reply Br. 2-3).
Appellants contend the Examiner has not presented a clear articulation of the
reasons why the claimed invention would have been obvious with respect to
the 30 minutes worth of segments (Reply Br. 2) and identify page 12 of the
Specification as contrary to the Examiner's line of reasoning (Reply Br. 3).
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We disagree with Appellants and find the Specification is directed to buffer
size while the language of independent claim 21 is directed merely to a
method step. Additionally, we note the claims are generically directed to
"program content identification" and the Examiner has selected prior art
references concerning audio segments. We conclude if the program content
were to be a multimedia audiovisual program content, it would have been
obvious to one of ordinary skill in the art at the time the invention was made
the 30 minutes standard program size would have been an obvious choice to
be balanced with the cost of memory storage thereto. Therefore, we find
Appellants' argument is unavailing.
With respect to dependent claim 43, Appellants repeat similar
arguments for patentability advanced with respect to independent claim 21.
Since we found those arguments to be unpersuasive, we sustain the rejection
of claim 43.
With respect to independent claims 22, 23, and 35,2 Appellants
expressly rely upon the arguments advanced with respect to independent
claim 1. (App. Br. 17-18). Since we found Appellants' arguments
unpersuasive with respect to independent claim 1, we find these same
arguments to be unpersuasive with respect to independent claim 22 which
performs the same recited functions. Appellants recite the language of the
claims and proffer the Examiner must interpret the limitations in light of the
Specification; however, Appellants provide no specific arguments for
patentability with respect to any disclosed corresponding structure.

2 Appellants have not set forth separate arguments for patentability of claim
36, thus claim 36 will fall with parent claim 35.
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Therefore, we are left to speculate as to any differences. Thus, Appellants'
general contention does not show error in the Examiner's rejection.
Appellants further contend the Examiner has not performed the
requisite claim interpretation with respect to independent claims 22, 23, and
35 with respect to the "means for . . ." limitations. (Reply Br. 3-4). While
we agree with Appellants the Examiner has not expressly identified the
corresponding structure for the “means” limitations in the prior art teachings,
we note Appellants' Summary of the Claimed Subject Matter in the Appeal
Brief generally identifies the corresponding structure for independent claim
22 to be page 5 for the structure and pages 7 and 12 for the functions. We
note Appellants' identified corresponding structure is so broad and sweeping
in the Specification at page 5 with respect to the structure to perform any
functions. Therefore, we find the Examiner's reliance upon the general
structure disclosed in the three prior art references to be adequate
corresponding structure for performing the recited functions.
While Appellants have proffered the Examiner's lack of an express
statement of the "means for . . ." limitations regarding the specific structure
described in the Specification, Appellants have also provided no specific
arguments relative to any specific structure other than a mere general
allegation the Office has not provided the required claim interpretation. As
discussed above, we find the Specification to be quite general and
Appellants have not identified any specific structure, acts, or materials and
no specific algorithm to perform the recited functions. Therefore, we find
the audio processing of Logan may be readily expanded to a longer audio
program which would meet the generic field of endeavor of "program
content identification" (since a multimedia determination is not recited).
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Therefore, Appellants have not shown error in the Examiner's reasoned
conclusion of obviousness.
With respect to dependent claims 44 and 45, Appellants repeat similar
arguments for patentability advanced with respect to independent claim 1.
Since we found those arguments to be unpersuasive, we sustain the rejection
of claims 44 and 45.
With respect to independent claims 24 and 34, Appellants rely upon
the arguments advanced with respect to independent claim 1. (App. Br. 19-
20). Since we found those arguments to be unpersuasive, we sustain the
rejection of claims 24 and 34.
With respect to dependent claims 25-30, 32, and 33, Appellants rely
upon the arguments advanced with respect to independent claim 24. Since
we found those arguments to be unpersuasive, we sustain the rejection of
claims 25-30, 32, and 33.

CONCLUSION
The Examiner did not err in rejecting claims 1-19, 21-30, 32-37, and
41-45 under 35 U.S.C. § 103(a).
The Examiner did not err in rejecting claims 22, 23, 35, and 36 under
35 U.S.C. § 112, first paragraph.

DECISION
The Examiner’s decision rejecting claims 1-19, 21-30, 32-37, and
41-45 is affirmed.
The Examiner’s decision rejecting claims 22, 23, 35, and 36 under 35
U.S.C. § 112, first paragraph, is affirmed.
Appeal 2011-001911
Application 10/629,486

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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

pgc/llw