Ex Parte Jacobs

Patent Trial and Appeal Board

Aug 17, 2015

11852956 (P.T.A.B. Aug. 17, 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.
11/852,956 09/10/2007 Mitch C. Jacobs PD-207093 2203
20991 7590 08/17/2015
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
SMITH, CHENEA
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
08/17/2015 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 MITCH C. JACOBS
____________________

Appeal 2013-006612
Application 11/852,956
Technology Center 2400
____________________

Before MAHSHID D. SAADAT, LINZY T. McCARTNEY, and
KAMRAN JIVANI, Administrative Patent Judges.

McCARTNEY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1–25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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STATEMENT OF THE CASE
Appellant’s invention “relates generally to television broadcasting,
and more particularly to a method and apparatus for tracking content played
including inserted material in a broadcast television signal.” Spec. ¶ 1.
Claims 1 and 13 illustrate the claimed subject matter:
1. A method comprising:
generating a first run log at a first automation system
prior to broadcasting;
generating a second run log at a second automation
system prior to broadcasting; and
generating a consolidated run log corresponding to an on-
air status from the first run log and the second run log.
13. A method comprising:
generating a content signal;
monitoring a switch having a primary position and a back-up
position and generating a switch position signal;
inserting insert material into the content signal at an automation
system of a broadcasting system prior to broadcasting; and
generating a consolidated run log corresponding to the insert
material, the content signal and the switch position signal prior to
broadcasting at the broadcasting system.

REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Whymark (US 2006/0195863 A1; Aug. 31, 2006).
Claims 2–25 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over combinations of Whymark, Feuer, (US 2003/0004793 A1; Jan. 2,
2003), Griffiths (US 6,286,045 B1; Sept. 4, 2001), Holtz (US 2003/0070167
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A1; Apr. 10, 2003), Atarashi (US 6,173,312 B1; Jan. 9, 2001), and Echeita
(US 5,826,165; Oct. 20, 1998).

ANALYSIS
Claim 1
Appellant contends Whymark does not disclose “generating a first run
log at a first automation system prior to broadcasting” or “generating a
second run log at a second automation system prior to broadcasting” as
recited in claim 1. See App. Br. 5–8. In particular, Appellant argues
Whymark’s schedules are not “run logs” within the meaning of the claim 1,
as one of skill in the art would understand that “a run log is generated in
response to events happening, [whereas] Whymark’s ‘schedules’ are
generated to define when events should happen . . . .” App. Br. 6–7
(emphases added). Appellant contends the Examiner’s rejection of the
original claims and the Examiner’s current construction of “log” support
Appellant’s argument that Whymark’s schedules are not “run logs.” See
App. Br. 7–8; Reply Br. 2–3.
We find Appellant’s arguments unpersuasive. First, Appellant has not
pointed to anything in the claims or Appellant’s specification that supports
Appellant’s assertion that one of skill in the art would understand that a “run
log” must be “generated in response to events happening.” See App. Br. 6.
In fact, Appellant does not provide any persuasive evidence in support of
this assertion. See id. Simply asserting a term has a particular meaning to
one of skill in the art does not establish that is the case.
Second, with respect to the Examiner’s rejection of the original
claims, the Examiner did not conclude the original claims are limited to
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devices that “receive, analyze, and report on broadcasted content” and
exclude schedules as suggested by Appellant. See id. at 7–8. Rather, the
Examiner simply determined that the original claims encompass Whymark’s
detection devices. See Non-Final Act. 3. The fact that the Examiner
determined Appellant’s original claims are broad enough to include
Whymark’s detection devices does not, without more, mean that Appellant’s
amended claims do not encompass Whymark’s schedules.
Third, the Examiner’s construction of “log” does not explicitly limit
the term to past events. The Examiner noted the Merriam-Webster
Dictionary defines a “log” as “a record of performance, events, or day-to-
day activities. See Ans. 6. Although Appellant asserts the definition means
“a log is a record of something that has already occurred,” Appellant has
provided no support for this assertion, and the definition does not explicitly
limit a “log” to events that have already occurred. In light of Appellant’s
failure to provide support for Appellant’s interpretation of “log” and the
absence of an explicit temporal limit in the Examiner’s definition of the
term, we will not limit “log” to past events.
At bottom, Appellant has failed to provide any persuasive evidence or
reasoning to support Appellant’s construction of “run logs.” Appellant has
therefore failed to persuade us the Examiner’s erroneously found
Whymark’s schedules are “run logs” within the meaning of claim 1.
Accordingly, we sustain the Examiner’s rejection of claim 1.
Claims 13–16
Appellant argues neither Griffiths nor Atarashi teach or suggest
“monitoring a switch having a primary position and a back-up position and
generating a switch position signal” or “generating a consolidated run log
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corresponding to the insert material, the content signal and the switch
position signal prior to broadcasting at the broadcasting system.” See App.
Br. 10–14. Specifically, Appellant contends the Examiner “does not allege
that Griffiths teaches ‘monitoring a switch’” and, in any event, Griffiths does
not use the term “switch” to describe a component “but rather [to describe]
an event, i.e., the switch from A to B.” Id. at 13; Reply Br. 3. Moreover,
according to Appellant, Griffiths’s use of “the terms backup information
server and primary information server. . . describ[e] servers and not physical
positions of a switch.” App. Br. 13. Appellant contends that Atarashi does
not remedy these alleged deficiencies. Id. In Appellant’s view, because
neither Griffiths nor Atarashi teach or suggest “monitoring a switch,” the
combination of Griffiths and Atarashi cannot teach or suggest “generating a
consolidated log corresponding to the switch position signal.” Id. at 13–14.
We find Appellant’s arguments unpersuasive. First, the Examiner
found a combination of Feuer, Griffiths, and Atarashi suggests the
“monitoring” and “generating” limitations at issue. See Final Act. 13–15.
“[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references.” In
re Keller, 642 F.2d 413, 426 (CCPA 1981).
Second, contrary to Appellant’s argument, the Examiner explicitly
concluded Griffiths suggests the “monitoring a switch” portion of the
“monitoring” limitation. See Final Act. 14, Ans. 10–11. Regarding the
claimed “switch,” the Examiner explained that Griffiths’s process of
switching from a primary server to a backup server “must be carried out by a
computer/processor” and therefore Griffiths suggests a “switch.” See Ans.
11–12. Appellant has not persuasively challenged this finding.
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Third, as noted by the Examiner, claim 13 does not recite “physical
positions of a switch.” Id. at 11. Thus, Appellant’s arguments about the
“physical positions of a switch” are not commensurate with the scope of the
claim and are therefore unpersuasive. In any event, Appellant’s unsupported
argument has not persuaded us Griffiths’s backup information server and
primary information server fail to satisfy the limitations recited in claim 13.
Fourth, Appellant’s contention that Griffiths and Atarashi fail to teach
or suggest generating the recited “consolidated run log” rests on Appellant’s
arguments regarding “monitoring a switch” and “physical positions of a
switch.” See App. Br. 13–14. Because we find these arguments
unpersuasive for the reasons discussed above, we also find Appellant’s
contention regarding the “consolidated run log” unpersuasive.
For these reasons, we sustain the rejection of claims 13–16
Claim 8
Finally, Appellant argues in the Reply Brief that Griffiths fails to
teach or suggest the subject matter recited in claim 8. See Reply Br. 3.
However, in the Appeal Brief Appellant simply argued claim 8 recites
patentable subject matter because it depends from claim 1 and because as
“discussed with respect to claim 13, Griffiths and Atarashi do not disclose
monitoring a switch position.” App. Br. 15. To the extent the arguments in
the Reply Brief for claim 8 differ from those in the Appel Brief, Appellant
has waived those arguments. See Ex parte Borden, 93 USPQ2d 1473, 1474
(informative) (“[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner’s rejections . . . .”). As explained above, we find Appellant’s
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arguments concerning claims 1 and 13 unpersuasive; therefore, we sustain
the Examiner’s rejection of claim 8.
Remaining Claims
Appellant relies on arguments similar to those discussed above for
claims 2–7, 9–12, and 17–25. See App. Br. 9–10, 14–17. We find these
arguments unpersuasive for the reasons discussed above; therefore, we
sustain the Examiner’s rejection of claims 2–7, 9–12, and 17–25.
DECISION
We affirm the Examiner’s rejections of claims 1–25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

kis