Ex Parte Davies et al

Patent Trial and Appeal Board

Feb 4, 2015

12452760 (P.T.A.B. Feb. 4, 2015)

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.
12/452,760 02/16/2010 Colin John Davies 7251/106933 6143
24628 7590 02/05/2015
Husch Blackwell LLP
Husch Blackwell Sanders LLP Welsh & Katz
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606
EXAMINER
SALAD, ABDULLAHI ELMI
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
02/05/2015 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 COLIN JOHN DAVIES, JAMES GEOFFREY WALKER,
NICHOLAS THEXTON, and SIMON JOHN PARNALL

Appeal 2012-006270
1

Application 12/452,760
Technology Center 2400
____________________

Before ROBERT E. NAPPI, JEAN R. HOMERE, and JOHN PINKERTON,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1
Appellants have identified the real party in interest as NDS, LTD. App Br.
2. An oral hearing was held in this appeal on January 22, 2015.
Appeal 2012-006270
Application 12/452,760

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1 and 5–19. Claims 2–4 have been cancelled.
App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ Invention
Appellants invented a method and apparatus for allowing an end user
to automatically access video content previously embedded in a third party
webpage. Spec. 1: 3–4. In particular, upon the user parsing portions of
hypertext markup language (HTML) text when loading the webpage, a
request associated with the embedded video content is automatically
submitted to the LocateTV server to display to the user the video content
along with the requested webpage. Spec. 11:32– spec. 12:28, Fig. 21 A, 21
B.
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
Claim 1. A method of providing information about video content to a
user of a client device, said method comprising:
receiving a request from the client device requesting information
about video content, wherein, without input from the user, said request is
automatically created and submitted by said client device in response to said
client device parsing a portion of hypertext markup language text, said
request including an internet protocol address of said client device;
establishing (a) a geographic location of said client device from said
internet protocol address; and (b) a time of said request;
Appeal 2012-006270
Application 12/452,760

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identifying one or more content providers available in said geographic
location;
in dependence on said one or more content providers and said time,
retrieving information about said video content from a database; and
providing said information to said client device.

Prior Art Relied Upon
Gast US 2008/0013540 A1 Jan. 17, 2008
Shacham US 2008/0172362 A1 Jul. 17, 2008

Rejection on Appeal
The Examiner rejects claims 1 and 5–19 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Shacham and Gast.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 3–10, and the Reply Brief, pages 2–6.
2

Dispositive Issue: Under 35 U.S.C. § 103, did the Examiner err in
finding the combination of Shacham and Gast teaches or suggests in
response to parsing a portion of HTML text, a client device automatically

2
Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed November 2, 2011), the Reply Brief (filed
February 24, 2012), and the Answer (mailed January 12, 2012) for the
respective details. We have considered in this decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
which Appellants could have made but chose not to make in the Briefs are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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Application 12/452,760

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creates a request for video content without input from the user, as recited in
claim 1?
Appellants argue the proposed combination does not teach or suggest
the disputed limitations emphasized above. App. Br. 5–9. According to
Appellants, Schacham’s disclosure of an electronic device user submitting a
search query for retrieving content associated with a link teaches a user-
generated query, as opposed to a query automatically created by the
electronic device. Id. at 8.
In response, the Examiner finds because Appellants’ Specification
requires that the query be generated by the user, Shacham’s disclosure of
parsing a received query to retrieve search content associated therewith
teaches the disputed limitations. Ans. 11–13.
Based upon our review of the record before us, we find error with the
Examiner’s obviousness rejection regarding claim 1. In particular, we do
not agree with the Examiner’s finding that the user query recited in the claim
is generated by the user. As correctly argued by Appellants, while the
Specification provides an embodiment directed to user-generated queries,
the Specification also provides another embodiment pertaining to
automatically generated queries by the user device. App. Br. 5–6. Besides, a
conclusion of obviousness cannot be supported merely by showing lack of
written description. In re Barker, 559 F.2d 588, 593 (CCPA 1977). We
thus agree with Appellants that because Shacham discloses a user-generated
query, as opposed to a query automatically generated by the user’s device
upon parsing HTML text, Shacham does not teach the disputed limitations.
Because Appellants have shown at least one reversible error in the
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Application 12/452,760

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Examiner’s obviousness rejection, we need not reach the merits of
Appellants’ additional arguments.
Independent claims 18 and 19 similarly recite a limitation directed to
a client device requesting information about video content where the request
is created and submitted without input from the user. Thus, , Appellants
have similarly shown error in the rejections of those claims for the foregoing
reasons, as well as claims 5–17 which depend from claim 1.
DECISION
We reverse the Examiner’s rejection of claims 1 and 5–19 as set forth
above.
REVERSED

dw