Ex Parte Carney et al

Patent Trial and Appeal Board

Apr 17, 2018

13771592 (P.T.A.B. Apr. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131771,592 02/20/2013
71867 7590 04/19/2018
BANNER & WITCOFF, LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
FIRST NAMED INVENTOR
John Carney
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
007412.02152 1324
EXAMINER
LE, RONG
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
04/19/2018 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 JOHN CARNEY, DAVID DE ANDRADE,
SITHAMP ARA BABU NIRANJAN, DAVID BRANDYBERRY,
LEON FRANZEN, LENA CHANE, MATT MARENGHI,
PRAKASH HEGDE, ALEX CHUNG, VIV A CHU,
GREG THOMSON, and RUTH DAWSON
Appeal2017-009979
Application 13/771,592
Technology Center 2400
Before ALLEN R. MacDONALD, BETH Z. SHAW, and
PHILIP A. BENNETT Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
1 Appellants state TVWORKS, LLC is the real party in interest. App. Br. 2.
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Application 13/771,592
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection
of claims 19--23, 25-28, 34, 38--47, 49, and 51-54. Appellants have
cancelled claims 1-18, 24, 29-33, 35-37, 48, and 50. App. Br. 11-15. We
have jurisdiction under 35 U.S.C. § 6(b ).
Representative Claim
Representative claim 19 under appeal reads as follows (emphases and
bracketed material added):
19. A method comprising:
[A.] receiving an application template and a plurality of rules,
wherein the application template comprises a layout of an
application related to video and the plurality of rules
comprise a plurality of selection criteria for selection of
content for use within the layout of the application
related to video;
[B.] selecting, from a database of content and based on the
plurality of rules, content;
[C.] generating, based on business rules corresponding to the
application related to video, a data file comprising the
selected content;
[D.] converting, by a processor, the application template and
the data file to a plurality of files that are in a format
specific to a client device; and
[E.] transmitting, to the client device and via a distribution
network, the plurality of files.
Rejections on Appeal
The Examiner rejected claims 19--23, 28, 42--44, 53, and 54 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Deller et
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Application 13/771,592
al. (US 7 ,516,468 B 1, issued Apr. 7, 2009) and Lemmons (US
2003/0028873 Al, published Feb. 6, 2003). 2
The Examiner rejected claims 25-27, 34, 38--41, 45--47, 49, 51, and
52 under 35 U.S.C. § 103(a) as being unpatentable over various
combinations of Deller, Lemmons, and other references. 3
Issue on Appeal
Did the Examiner err in rejecting claim 19 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred.
A.
Examiner finds as to claim 19:
Lemmons teaches a system which generates post
production visual alterations, wherein dynamic objects (dynamic
data file) are inserted into a TV presentation, including those of
internet information and links. The objects are inserted according
to rules (a plurality of rules) which indicate which advertisement
is to be placed with which attribute wherein one of the attributes
allows the related ad object to be placed in the ad, and separate
graphics file representing the object is elected for placement in
the TV presentation, according to the rules, which reads on
2 The contentions discussed herein as to claim 19 are determinative as to this
rejection. Therefore, except for our ultimate decision, we do not discuss
claims 20-23, 28, 42--44, 53, and 54 further herein.
3 Our decision as to claim 19 is determinative as to the rejections of these
claims. Except for our ultimate decision, we do not discuss these claims
further herein.
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Application 13/771,592
(plurality of rules comprise plurality of selection criteria for
selection of content for use within layout of application related
to video) (Fig. 3b, 13, 49)[.]
Lemmons teaches the object referenced in the attribute
files are graphics files displayable on the TV receiver such as 322
and 324 shown in Fig. 3b, and overlaying computer generated
bitmap from MPEG signals information on to preexisting video
content, wherein the label may be in MPEG form, and further
teaches the bitmap information of the label content are generated
using instructions downloaded in the form of codes which can
generate graphics and text at the STB. (P. 66-68) which reads on
(converting by processor application template, and data file and
one or more sub-pages or external assets to a plurality of files
that are in a format specific to a client device/network topology
or device platform)[.] In order to properly view[,] the objects
with the ads shown with the TV content being presented at the
viewer end, there must have been conversion of files into
displayable formats, which reads on (transmitting to client
devices via distribution network, plurality of files).
Final Act. 7-8 (emphasis added).
B.
Appellants contend4 that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Lemmons does not describe or suggest "converting, by a
processor, the application template and the data file to a
plurality of files that are in a format specific to a client device,"
as recited in claim 19. Rather, the system of Lemmons can
"combine the information of the label with the pre-existing video
stream" to form an "enhanced video signal," which is simply a
modified video signal, not "a plurality of files," as recited in
claim 19.
4 The contentions we discuss are determinative as to the rejections on appeal.
Therefore, Appellants' other contentions are not discussed in detail herein.
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Application 13/771,592
Moreover, the Final Rejection has not explained how the
enhanced video signal is equivalent to the "plurality of files that
are in a format specific to a client device." Lemmons, at best,
teaches applying labels to modify the content of the video signal
to yield the enhanced video signal, but does not disclose any
modification or conversion of data into a "format specific to a
client device."
App. Br. 5 (emphasis added).
Appellants also contend:
[N]either reference, alone or in combination, teaches or
suggests the claimed "selecting" be(ore the claimed
"transmitting." In Deller, the application scripts 207 process
business data 202 to yield a graphical presentation at the set top
box 200. See Fig. 2; col. 5, lls. 43-58. In other words, the alleged
selection of content (by the application scripts) in Deller occurs
after files are received by the client set top box.
In Lemmons, labels may be selected for placement in
video data either at a server (Fig. 7) or at a set top box (Fig. 8).
However, in both cases, placement and contour data is used to
select labels after files are obtained by the server or client, as the
case may be. See Lemmons, Fig. 7 & para. 0057; Fig. 8 & para.
0061.
App. Br. 7.
C.
As articulated by the Federal Circuit, the Examiner's burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761F.2d671, 674 (Fed. Cir. 1985) ("preponderance of the
evidence is the standard that must be met by the PTO in making rejections").
"A rejection based on section 103 clearly must rest on a factual basis[.]" In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). "The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not ...
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Application 13/771,592
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis." Id.
We conclude, the Examiner's analysis fails to meet this standard
because the rejection does not adequately explain the Examiner's finding of
fact that Lemmons teaches (Final Act. 7-8) the argued "converting" and
"selecting before transmitting" (App. Br. 5, 7). We further conclude,
consistent with Appellants' argument, there is insufficient articulated
reasoning to support the Examiner's findings. Therefore, we conclude that
there is insufficient articulated reasoning to support the Examiner's final
conclusion, given the combination of Deller and Lemmons, that claim 19
would have been obvious to one of ordinary skill in the art at the time of
Appellants' invention.
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 19-23, 25-28, 34, 38--47, 49, and 51-54 as being unpatentable under
35 U.S.C. § 103(a).
(2) On this record, claims 19-23, 25-28, 34, 38--47, 49, and 51-54
have not been shown to be unpatentable.
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Application 13/771,592
DECISION
The Examiner's rejections of claims 19--23, 25-28, 34, 38--47, 49, and
51-54 are reversed.
REVERSED 5
5 We do not reject Appellants' claim 19 under 35 U.S.C. § 103 as being
unpatentable over the combination of Allen (US 2004/0078814 Al,
published Apr. 22, 2004; cited by the Examiner), Deller, and Lemmons.
However, should there be further prosecution of these claims, the
Examiner may wish to consider whether Allen discloses or render obvious
the limitations of claim 19 that Appellants argue before this Panel. For
example, as to Appellants' "converting" argument, Allen at paragraphs 3 8
and 43 places data into various suitable formats consumable by the client
terminals; and as to Appellants' "selecting" and "transmitting" argument,
Allen at paragraph 73 selects the viewer content with transmission of data at
paragraphs 43--44.
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