Ex Parte Jarman et al

Patent Trial and Appeal Board

Oct 27, 2014

11104924 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MATTHEW T. JARMAN and JASON SEELEY
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Appeal 2012-005631
Application 11/104,924
Technology Center 2400
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Before JEFFREY S. SMITH, DANIEL N. FISHMAN, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–19 and 21–29.1 We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
In reaching the decision, we have considered only the arguments
Appellants actually raised. Arguments Appellants did not make are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).

1 Appellants’ inclusion of claim 20 in the pending claims (App. Br. 3)
appears to be a typographical error, as claim 20 has been cancelled. See
App. Br. Appendix of Claims ii; Final Rej. 1; Amendment filed October 13,
2010 at p. 3.
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STATEMENT OF THE CASE
The present invention relates to filtering portions of a multimedia
presentation. See generally Spec., 1. Claim 1 is illustrative:
1. A method of filtering portions of a multimedia content
presentation, the method comprising:
accessing at least one filter file defining a filter start
indicator, a filter end indicator and a filter action;
reading digital multimedia information from a memory
media, the multimedia information including a location
reference indicating a time code in relation to the start of the
multimedia content;
comparing the location reference of the multimedia
information with the filter start indicator; and
responsive to the comparing operation, executing a
filtering action if the location reference of the multimedia
information corresponds to a range from-the filter start indicator
to the filter end indicator of the at least one filterable portion of
the multimedia content.

THE REJECTIONS
Claims 1, 2, 7, 28 and 29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable by Flavin (US 7,249,366 B1; issued July 24, 2007, filed
Aug. 5, 1999) and Gerba (US 5,931,908; issued Aug. 3, 1999).
Claims 3–6, 8–16, 18, 19, and 21–27 are rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Flavin, Gerba, and Abecassis (US
5,610,653; issued Mar. 11, 1997).
Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Flavin, Gerba, Abecassis, and Ostrover (US 6,351,596 B1; issued Feb.
26, 2002).

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Application 11/104,924

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ISSUES
Under 35 U.S.C. § 103, has the Examiner erred by finding Flavin and
Gerba collectively teach:
a location reference indicating a time code in relation to the start of
the multimedia content; and
comparing the location reference of the multimedia information with
the filter start indicator
as recited in claim 1?
PRINCIPLES OF LAW
“[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(citation omitted).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (citation omitted).
The “mere disclosure of alternative designs does not teach away” and
“just because better alternatives exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes.” In re Mouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012) (citations omitted).
“Although a reference that teaches away is a significant factor to be
considered in determining unobviousness, the nature of the teaching is
highly relevant, and must be weighed in substance. A known or obvious
composition does not become patentable simply because it has been
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described as somewhat inferior to some other product for the same use.” In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

ANALYSIS
Claims
On this record, we find that the Examiner did not err in rejecting claim
1.
Appellants assert Flavin does not teach comparing the location
reference of the multimedia information with the filter start indicator
because Flavin’s announcement message type is not the same as a location
reference, let alone a location reference indicating a time code in relation to
the start of the multimedia content. See App. Br. 7–8. Appellants contend
Flavin teaches away from combining Flavin with Gerba because Flavin
teaches an absolute time, and the proposed combination would render Flavin
not working for its intended purpose. See App. Br. 8–10.
We disagree with Appellants’ arguments (App. Br. 7–10), and agree
with and adopt the Examiner’s findings and conclusions on pages 13, 14 and
15 (first paragraph) of the Answer as our own. Therefore, we limit our
discussion to the following points for emphasis.
In light of the broad claim limitations, the Examiner reasonably
interprets the limitations to encompass Flavin’s and Gerba’s disclosures.
First, the Examiner finds Flavin teaches a location reference indicating
[certain information] (mapped to Flavin’s Segment Identifiers). See Ans.
13–15; Flavin, Fig. 3, 5:51–65. Indeed, Flavin explains:
The Segment Identifier section 320 has information identifying
specific content in a segment or portion of the content stream 112
among all the hours of television being broadcast, and comprises . . .
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the Program Source Id 322, which indicates which broadcast or
transmission this refers to (i.e., WCBS, Channel 2 in New York City,
or CNN Airport Channel, East Coast Feed), and optionally Position
Within Frame Info 323, which indicates what point or area within a
video frame to which the announcement 115 applies. Together the
time 321 and Content Stream ID 322, and position (e.g. within frame)
323 identify what segment or portion of the content stream to which
the announcement 115 is message applies.

Flavin 5:51–65 (emphases added).
The Examiner finds—and Appellants do not dispute—Gerba teaches
indicating a time code in relation to the start of the multimedia content. See
Ans. 5; Gerba, Fig. 6a; 4:50–5:4.
As a result, Flavin and Gerba collectively teach a location reference
indicating a time code in relation to the start of the multimedia content.
Combining the teachings of Flavin and Gerba would have predictably used
prior art elements according to their established functions—an obvious
improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Because the Examiner relies on the combination of Flavin and Gerba to
teach the disputed claim limitations, Appellants cannot establish
nonobviousness by attacking the reference Flavin individually. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants’ teaching away argument is unpersuasive because the
Examiner proposes to add Gerba’s indicating a time code in relation to the
start of the multimedia content (“Relative Time Code”) to Flavin’s method.
See Ans. 5–6. Contrary to Appellants’ assertion that the combination would
lack the absolute time stamp and thus not work for the intended purpose, the
improved method would have the benefit of Flavin’s absolute time stamp,
plus Relative Time Code.
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In addition, “[a] known or obvious composition [or system] does not
become patentable simply because it has been described as somewhat
inferior to some other product for the same use.” In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994). In Gurley, the court held the invention would have
been obvious by combining Yamaguchi and other prior art because “[e]ven
reading Yamaguchi’s description as discouraging use of epoxy for this
purpose, Gurley asserted no discovery beyond what was known to the art.”
Id.
Here, Flavin’s language does not constitute discouraging using
Relative Time Code in addition to the absolute time code. Nor does Flavin
teach Relative Time Code “should not” or “cannot” be combined with
Flavin’s method. Mouttet, 686 F.3d at 1334. Therefore, the disputed claim
limitations are obvious because Appellants “asserted no discovery beyond
what was known to the art.” Gurley, 27 F.3d at 553.
Accordingly, we sustain the Examiner’s rejection of claim 1.
Although Appellants state independent claims 1 and 28 are “fundamentally
different” (App. Br. 7), claim 28 is argued together with claim 1 (App. Br.
7–10). Thus, we sustain the rejection of independent claim 28 for the same
reasons.
Appellants argue all dependent claims should be allowed for the same
or similar reasons. Thus, for similar reasons discussed above, we sustain the
rejections of all dependent claims.

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DECISION
The Examiner’s decision rejecting claims 1–19 and 21–29 is affirmed.
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

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