Ex Parte Dacosta

Board of Patent Appeals and Interferences

Sep 28, 2006

10782265 (B.P.A.I. Sep. 28, 2006)

The opinion in support of the decision being entered today was not w
for publication and is
ritten
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BEHRAM MARIO DACOSTA
____________

Appeal No. 2006-2208
Application No. 10/782,265
____________

ON BRIEF
____________

Before THOMAS, SAADAT, and MACDONALD, Administrative Patent
Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134(a) from
the Examiner’s final rejection of claims 1-17, which constitute
all of the claims pending in this application.
We reverse and enter a new rejection pursuant to 37 CFR
§ 41.50(b).
BACKGROUND
Appellant’s invention is directed to a method for obtaining
information based on a TV program using the closed captioning
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text. According to Appellant, a set of primary words appear
differently than the remaining text within the close captioning
text which permits the viewer to select at least one word to
invoke the display of a list of content related to the selected
word (specification, page 2). An understanding of the invention
can be derived from a reading of exemplary independent claims 1
and 10 which are reproduced as follows:
1. A method for obtaining information based on a TV
program, comprising:

receiving from a head end transmitter, along with the
program, closed captioning text;

primary words within the closed captioning text as received
from the head end transmitter appearing differently within the
closed captioning text than remaining secondary words when the
closed captioning text is presented on a display of a TV prior to
any user selection of words in the closed captioning text;

permitting a user of a remote control device communicating
with the TV to select at least one word to establish a selected
word; and

if the selected word is a primary word, displaying a list of
content related to the selected word.

10. A system for obtaining information using a TV closed
caption display, comprising:

a TV receiving content from a source, the content including
closed caption text;

a remote control device configured for wireless
communication with the TV; and

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a data structure accessible to a computer associated with at
least one of: the source, and the TV, the computer retrieving
from the data structure a list of content related to at least one
word appearing in the closed caption text and selected by a user
manipulating the remote control device, the word appearing within
the closed caption text and being selected from the closed
caption text by means of the remote control device, the word
being made to flash within the closed caption text.

The Examiner relies on the following references in rejecting
the claims:
U.S. Patents
Wasilewski et al. (Wasilewski) 5,359,601 Oct. 25, 1994
Chang 5,543,851 Aug. 6, 1996
Isoe et al. (Isoe) 5,671,019 Sep. 23, 1997
Brodsky 5,809,471 Sep. 15, 1998
Patterson 5,923,379 Jul. 13, 1999
O’Brien et al. (O’Brien) 6,055,569 Apr. 25, 2000
Allport 6,097,441 Aug. 1, 2000
Sampsell 6,496,122 Dec. 17, 2002

Other Publications
Thomsen US 2002/0067428 A1 Jun. 6, 2002

“Expanding the capabilities of Closed Caption,” IBM
Technical Disclosure Bulletin (IBM-TDB), Issue No. 452, December
1, 2001, p. 2129.

“Encyclopedia Britannica/Premium Service,”
[online][retrieved from the Internet Archive (WayBack Machine)
using Internet
, April 6, 2005.
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Claims 1, 2, 5, 6 and 8 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of
Wasilewski, Isoe and Brodsky.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wasilewski, Isoe and Brodsky in combination
with Sampsell.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wasilewski, Isoe and Brodsky in combination
with Chang.
Claims 7 and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wasilewski, Isoe and Brodsky in
combination with Encyclopedia Britannica Online article.
Claims 10 and 14-16 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Thomsen and IBM-TDB.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thomsen, IBM-TDB and Patterson.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thomsen, IBM-TDB and Allport.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thomsen, IBM-TDB and Encyclopedia Britannica
Online article.
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Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thomsen, IBM-TDB and O’Brien.
We make reference to the briefs and the answer for the
respective positions of Appellant and the Examiner.
OPINION
The main point of contention is based on whether the words
within the closed captioning text of Brodsky appear differently
from any other words therein. Appellant asserts that while
Brodsky adds words to a dynamically evolving dictionary, the
added words appear the same as other words and are selected
automatically without being selected by the user from the closed
captioning text itself (brief, page 6). Appellant further argues
that if every word appears differently from the others in a
closed captioning text because they are spelled differently, as
argued by the Examiner, every word will become a “primary word”
(brief, page 7; reply brief, page 2).
The Examiner responds by stating that the words added to the
dictionary are derived from the closed captioning text and the
user can request additional content pertaining to the topic
recently seen or heard (answer, page 16). The Examiner further
argues that Appellant’s specification does not clearly define how
a “primary word” is different from a “secondary word” and merely
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indicates that the different appearance is achieved by virtue of
having their associated content (answer, pages 18-21).

As a general proposition, in rejecting claims under
35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993) and In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). A prima facie case of obviousness is
established when the teachings of the prior art itself would
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Bell, 991 F.2d 781, 783, 26
USPQ2d 1529, 1531 (Fed. Cir. 1993); Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.
1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985). In
considering the question of the obviousness of the claimed
invention in view of the prior art relied upon, the Examiner is
expected to make the factual determination set forth in Graham v.
John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to
provide a reason why one having ordinary skill in the pertinent
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art would have been led to modify the prior art or to combine
prior art references to arrive at the claimed invention. See
also In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456
(Fed. Cir. 1998). Such evidence is required in order to
establish a prima facie case. In re Piasecki, 745 F.2d 1468,
1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984).
Contrary to the Examiner’s assertion, the limitation of
claim 1 related to the primary words appearing differently within
the closed captioning text than the remaining secondary words
does require that the primary words be displayed in a way that
makes them look different from the other words within the closed
captioning text. Additionally, the specification provides
exemplary means for making some words appear differently such as
italicizing, changing font, color and/or size and even animated
effects (specification, page 5, second full paragraph).
Therefore, the claims require that the primary words have some
kind of attribute that makes their appearance different from that
of the non-primary words. In that regard, we find the Examiner’s
broad interpretation that every word appears differently from the
other words by the virtue of being merely different words to be
unreasonable. We also agree with Appellant (reply brief, page 2)
that the words are required to appear differently within the
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closed captioning text, not in a separate list of words or
dictionary.
An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments.
“In reviewing the Examiner’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). In this case, as discussed by Appellant (brief, pages 5-
8), Brodsky merely adds the word from the closed captioning text
to a dictionary (col. 3, lines 60-64) where they remain for the
user to select and obtain additional information (col. 5, lines
11-20). Therefore, Brodsky creates a separate list of the words
that can be selected outside the closed captioning text. In
fact, in terms of primary and secondary words, since Brodsky
places every searchable word in the dictionary, there remains no
need for modifying the appearance of any remaining part of the
closed captioning text.
In view of our analysis above, we find that the Examiner has
failed to set forth a prima facie case of obviousness because the
necessary teachings and suggestions related to the claimed
primary words appearing differently within the text of the closed
captioning text, as recited in independent claim 1 is not shown.
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Accordingly, based on the weight of the evidence and the
arguments presented by the Examiner and Appellant, we are
constrained to reverse the Examiner’s decision and not sustain
the 35 U.S.C. § 103 rejection of claims 1, 2, 5, 6 and 8 over the
combination of Wasilewski, Isoe and Brodsky.
Turning now to the 35 U.S.C. § 103 rejection of claim 10, we
note the Examiner’s interpretation of the claim as merely
requiring that at least one word from the closed captioning text
be made to flash within the closed captioning text and that word
be selectable (answer, page 25). Apparently, the Examiner takes
the position that the particular flashing of the word has nothing
to do with the existence of supplemental content since the claim
requires that some words flash and be selected (id.).
Appellant argues that the flashing of the word as disclosed
by IBM-TDB is based on emotion and has nothing to do with a
selected word or retrieving a list of content related to the
selected word (brief, page 11). Appellant further asserts that
claim 10 does require that the content received from a source
include closed caption text from which a word is selected by a
user using a remote control and being made to flash (reply brief,
page 3).
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Upon a review of IBM-TDB and considering the arguments
presented, we find ourselves convinced by Appellant that the
claim indeed requires the word selected from the closed caption
text, for which a list of related content is retrieved, be made
to flash. Contrary to the Examiner’s position, the flashing of
the words in the closed caption text of IBM-TDB is merely based
on the type of emotion associated with how that word is spoken
and not on whether the word is selected by a user for receiving
information thereabout. As the Examiner has failed to set forth
a prima facie case of obviousness, the 35 U.S.C. § 103 rejection
of claims 10 and 14-16 over Thomsen and IBM-TDB cannot be
sustained.
With respect to the rejection of the remaining claims, we
note that the Examiner further relies on other prior art
references for the additional features recited in the dependent
claims. However, the Examiner has not pointed to any convincing
rationale in modifying the combination of Wasilewski, Isoe and
Brodsky or the combination of Thomsen and IBM-TDB with the
teachings of these references that would have overcome the
deficiencies of the applied prior art as discussed above with
respect to claims 1 and 10. Accordingly, we do not sustain the
35 U.S.C. § 103 rejection of claims 3, 4, 7 and 9 over
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Wasilewski, Isoe and Brodsky in combination with Sampsell, Chang
and Encyclopedia Britannica Online article nor of claims 10-17
over Thomsen and IBM-TDB in combination with Patterson, Allport,
Encyclopedia Britannica Online article and O’Brien.
CONCLUSION
In view of the foregoing, the decision of the Examiner
rejecting claims 1-17 under 35 U.S.C. § 103 is reversed.
We make the following new ground of rejection for claim 1
under 35 U.S.C. § 102 as being anticipated by Yen1 pursuant to
37 CFR § 41.50(b). We only consider this claim, but encourage
the Examiner to further consider the remaining claims for other
possible rejections over Yen alone or in combination with other
prior art references.
Claim 1 is rejected under 35 U.S.C. § 102(b) as being anticipated
by Yen.

1 Yen et al. (Yen), U.S. Patent No. 5,991,799, issued Nov. 23, 1999, a
copy of which accompanies this decision.
Yen relates to a method and system for receiving information from multiple
sources and interactively presenting the information to a recipient (abstract; col. 3, lines
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6-9). As depicted in Figure 1, the system of Yen describes receiving from a transmitter
closed captioning text in an output device such as television monitor 131 (col. 4, lines
14-22) which receives signals from a variety of information sources through a passive
tuner 111 (col. 4, lines 34-36). The output device is further described as a television
monitor and a speaker with such a high resolution screen so as to promote viewing of at
least one primary image and a plurality of secondary images (col. 6, lines 12-15). In
addition to traditional broadcast sources, displayed images of Yen may come from other
passive sources such as closed-captioning and other type of subcarrier embedded into
the broadcast signal (col. 8, lines 25-34). Additionally, Yen provides for crosslinking
each information item from both passive and active information sources so that other
information items may be referenced by multiplexer 120, whether the items are from the
same source or different ones (col. 8, lines 57-61). Among the secondary information
sources, the information items that may be crossed linked are websites displayed in the
broadcast show using a hypertext link displayed in closed caption text or other
annotation information (col. 11, lines 4-16).
As described above, Yen teaches the claimed primary words within the close
captioning text as the hypertext link which appear differently from the secondary words
made of the remaining regular text within the close captioning text. The claimed step of
permitting the user of a remote control to select at least a word is also described by Yen
as the recipient of information selects the particular information using input device 132
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(col. 6, lines 31-43). Yen further describes displaying a list of content related to a
selected word when a primary word is selected by allowing the user to select a
particular crosslinked information element such as an Internet service (col. 6, lines 44-
52) when the cross linked information is represented as hypertext links displayed in the
closed caption text (col. 11, lines 4-16).
In view of the discussion above, we find that as all the elements recited in
claim 1 are taught in the reference, Yen anticipates the claimed subject matter.
Accordingly, claim 1 is unpatentable under 35 U.S.C. § 102.
In addition to reversing the Examiner’s decision with
respect to the 35 U.S.C. § 103, this decision contains a new
ground of rejection pursuant to 37 CFR § 41.50(b). 37 CFR
§ 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
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by the examiner, in which event the proceeding will be remanded
to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .37
CFR § 1.196(b) provides that “[a] new ground of rejection shall
not be considered final for purposes of judicial review.”
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
REVERSED
37 CFR § 41.50(b)

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MAHSHID D. SAADAT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )

MDS/rwk
Appeal No. 2006-2208
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