Ex Parte HOKIMOTO

Patent Trial and Appeal Board

Aug 26, 2013

11465002 (P.T.A.B. Aug. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AKIHIRO HOKIMOTO
____________________

Appeal 2011-004772
Application 11/465,002
Technology Center 2100
____________________

Before DEBRA K. STEPHENS, ERIC B. CHEN, and HUNG H. BUI,
Administrative Patent Judges.

Per curiam.

DECISION ON APPEAL

Appeal 2011-004772
Application 11/465,002

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing
was held August 20, 2013.
We REVERSE.

Introduction
According to Appellant, the invention relates to a metadata generating
apparatus for generating metadata associated with content data continuously
generated in real time includes an additional information acquiring unit that
acquires additional information corresponding to at least one piece of the
content data and a link information adding unit that adds link information
uniquely identifying the at least one piece of the content data corresponding
to the additional information to the corresponding additional information to
generate the metadata (Abstract).

Exemplary Claim

Claim 1, reproduced below, is illustrative of the claimed subject
matter:
(1) A computer-implemented metadata generating apparatus
generating metadata associated with content data continuously
generated in real time, the metadata generating apparatus
comprising:

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an additional information acquiring unit includes a processor
that acquires additional information corresponding to at least
one piece of the content data, said content data being
continuously generated in real-time, and said additional
information acquiring unit stores the additional information in a
computer readable medium; and

a link information adding unit that adds link information
uniquely identifying the at least one piece of the content data
from other content data that is continuously generated in
real-time and corresponding to the additional information to the
corresponding additional information to generate the metadata.

REFERENCES
von Kaenel
Anderson
Onoda
US 2004/0117358 A1
US 2005/0144225 A1
US 2008/0195573 A1
Jun. 17, 2004
Jun. 30, 2005
Aug. 14, 2008

REJECTIONS
1

The Examiner made the following rejections:

(1) Claims 1, 2, 4, 5, 7, and 11-16 stand rejected under 35 U.S.C
§102(b) as being anticipated by von Kaenel (Ans. 5-8).
(2) Claims 3, 6, and 8-10 stand rejected under 35 U.S.C §103(a) as
being unpatentable over von Kaenel and Anderson (Ans. 9-10).
(3) Claims 1 and 11-16 stand rejected under 35 U.S.C §103(a) as
being unpatentable over von Kaenel and Onodo (Ans. 11-14).

1
We note Appellants’ stated grounds of rejection as presented in Appeal
Brief are not consistent with the Examiner’s rejections as outlined in both
the Final Office Action mailed January 26, 2010 and the Examiner’s Answer
mailed October 5, 2010. As such, for purposes for this Appeal, we will
consider the Examiner’s rejections as correctly outlined in the Examiner’s
Answer.
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ISSUE 1
Claims 1-16
Appellant argues the invention as recited in claim 1 and 11-16 is not
anticipated by von Kaenel because von Kaenel does not disclose “a link
information adding unit that adds link information uniquely identifying the
at least one piece of the content data from other content data that is
continuously generated in real-time and corresponding to the additional
information to the corresponding additional information to generate the
metadata” as recited in claim 1 and commensurately recited in claim 11
(App. Br. 8-10). Specifically, Appellant argues although von Kaenel
appears to describe linking spatial information to tabular data, von Kaenel
does not disclose adding linking information as recited (App. Br. 9).
Further, Appellant contends the spatial information in von Kaenel is not
described to uniquely identify the at least one piece of content data nor is the
spatial information added to the corresponding additional information to
generate the metadata (App. Br. 9-10).

Issue 1: Has the Examiner erred in finding von Kaenel discloses the
invention as recited in independent claims 1 and 11-16?

ANALYSIS
It is not enough [in an anticipation rejection] that the prior art
reference discloses part of the claimed invention, which an ordinary artisan
might supplement to make the whole, or that it includes multiple, distinct
teachings that the artisan might somehow combine to achieve the claimed
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invention. Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed.
Cir. 2008).
We conclude that the rejection of claims 1 and 11-16 lacks the
requisite specificity needed for the establishment of a prima facie case of
anticipation. The Examiner bears the initial burden of presenting a prima
facie case of unpatentability (In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992)). A prima facie case is established when the party with the burden of
proof points to evidence that is sufficient, if uncontroverted, to entitle it to
prevail as a matter of law. See Saab Cars USA, Inc. v. United States, 434
F.3d 1359, 1369 (Fed. Cir. 2006). Here, that burden has not been met in a
manner enabling proper review.
Specifically, the Examiner has cited multiple paragraphs for various
elements recited, but has not provided any explanation as to how these
multiple, distinct teachings may be combined to describe the present
invention (See Ans. 5 and 15-16).
Accordingly, based on the record before us we cannot sustain the
Examiner’s rejection of claims 1, 2, 4, 5, 7, and 11-16 under
35 U.S.C. § 102(b) for anticipation. Since claims 3, 6, and 8-10 depend
from claim 1, we cannot sustain the rejection of these claims under
35 U.S.C. § 103(a) for obviousness over von Kaenel and Onodo.

ISSUE 2
35 U.S.C. § 103(a): Claims 1and 11-16
Appellant asserts the invention as recited in claims 1 and 11-16 is not
obvious over von Kaenel and Onodo because: (1) Onodo does not cure the
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deficiencies of von Kaenel, as argued in the response to the rejection of
claim 1 for anticipation, and (2) the Examiner has not articulated why it
would have been obvious to combine Onodo and von Kaenel to arrive at
Appellant’s claims 1 and 11-16 (App. Br. 10-13). Specifically, Appellant
contends that although Onodo describes licensing data being added directly
to or multiplexed with content data, the licensing data is not added to
acquired additional data (App. 12-13). Further, Appellant argues the
Examiner’s assertion that combining von Kaenel and Onodo would allow
the enhancement of tuning of the system is unclear, i.e., the Examiner does
not specify what would be enhanced or tuned by combining the references
(App. Br. 11).
Issue 2: Has the Examiner erred in finding the combination of von
Kaenel and Onodo teaches or suggests the invention as recited in claims 1
and 11-16?

ANALYSIS
We conclude that the rejection of claims 1 and 11-16 lacks the
requisite specificity needed for the establishment of a prima facie case of
obviousness. Again, the Examiner has cited a multitude of paragraphs of the
references without setting forth with particularity how the cited disclosures
describe the present invention as recited.
Absent a convincing explanation from the Examiner in support of why
the cited portions of Kaenel and Onodo are deemed to teach the disputed
features, we are left to speculate how and why the references are being
applied. Consequently, based on the record before us, we conclude that the
combination of Kaenel and Onodo would not have taught or suggested each
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recited feature of Appellant’s claims 1 and 11-16 to one of ordinary skill in
the art at the time of Appellant’s invention.
We additionally find the Examiner has not sufficiently articulated
reasoning as to why an ordinarily skilled artisan would have been motivated
to combine the references. Specifically, we agree with Appellant that the
stated motivation, “it would allow the enhancement of tuning the system,” is
unclear as to what specifically would be enhanced or tuned.
As a result, the rejection of claims 1 and 11-16 fails to establish a
prima facie case of obviousness. Therefore, we cannot sustain the rejection
of claims 1 and 11-16 under 35 U.S.C. § 103(a) for obviousness over von
Kaenel and Onodo.

DECISION
The Examiner’s rejection of claims 1, 2, 4, 5, 7, and 11-16 under 35
U.S.C. § 102(b) as being anticipated by von Kaenel is reversed.
The Examiner’s rejection of claims 1 and 11-16 under 35 U.S.C.
§ 103(a) as being unpatentable over von Kaenel and Onodo is reversed.
The Examiner’s rejection of claims 3, 6, and 8-10 under 35 U.S.C.
§ 103(a) as being unpatentable over von Kaenel and Anderson is reversed.

REVERSED

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