Ex Parte Carney et alDownload PDFPatent Trial and Appeal BoardApr 17, 201813771592 (P.T.A.B. Apr. 17, 2018) Copy Citation 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. Appeal2017-009979 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 2 Appeal2017-009979 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. 3 Appeal2017-009979 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. 4 Appeal2017-009979 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 ... 5 Appeal2017-009979 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. 6 Appeal2017-009979 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. 7 Copy with citationCopy as parenthetical citation