Ex Parte Kelly

Board of Patent Appeals and Interferences

Jun 16, 2011

10515696 (B.P.A.I. Jun. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DECLAN PATRICK KELLY
____________________

Appeal 2009-013458
Application 10/515,696
Technology Center 2400
____________________

Before ALLEN R. MACDONALD, CARLA M. KRIVAK, and
ERIC S. FRAHM, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claims
Exemplary independent claims 1 and 13 under appeal read as follows:
1. A transmission system comprising:
at least one receiver,
a transmitting system for transmitting a title to the receiver, the title
including a plurality of content parts that are each identified by a content
part address in an addressing format that facilitates storage on a removable
storage medium, and
a web site for storing information parts corresponding to content parts
of the title;
the receiver being operative to receive:
the title,
linking information linking the title to the web site, and
a data file including data that associates each content part
address with a content part timing in a transmitting timing format;
the receiver including a controller for, under control of a conversion
application:
supplying the content parts for rendering using the content part
timing, enabling synchronous linking to the corresponding
information parts on the web site by using the data file to determine
the content part address based on the content part timing, and/or
determine the content part timing based on the content part address.
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13. A computer program product stored on a computer readable
medium and including computer executable instructions for causing a
controller in a receiver to:
process linking information that links a received title to a web site that
includes information parts corresponding to content parts of the title; each
content part being identified by a corresponding content part address using a
predetermined addressing format that facilitates storage on a removable
storage medium;
process a data file that includes data that associates each content part
address with a content part timing in a transmitting timing format;
supplying the content parts for rendering using the content part
timing; and enabling synchronous linking to the information parts by using
the data file to determine the content part address based on the content part
timing, and/or determine the content part timing based on the content part
address.
The Examiner’s Rejections
(1) The Examiner rejected claim 13 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
(2) The Examiner rejected claims 1 and 3-20 as being unpatentable
under 35 U.S.C. § 103(a) over the combination of Yamanaka (US
2002/0083433 A1), Zigmond (US 6,215,483 B1), and Kitsukawa (US
2002/0059590 A1).
(3) The Examiner rejected claim 2 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Yamanaka, Zigmond,
Kitsukawa, and Zigmond et al. (US 6,571,392 B1).
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The Examiner’s Findings
With respect to the first rejection supra, under § 101, the Examiner
determines that claim 13 is drawn to non-statutory subject matter because
the computer program product could be embodied as a computer program
transmitted over the Internet (Ans. 3).
With respect to the second and third rejections supra, under § 103(a),
the Examiner determines that Kitsukawa teaches or suggests enabling
synchronous linking to information on a website by using a data file to
determine a content part address based on the content part timing, and/or
determining the content part timing based on the content part address (Ans.
5). The Examiner relies on paragraph [0044] and claim 39 of Kitsukawa as
disclosing timing data corresponding to an advertising link (i.e., content part
address) which is used to enable synchronous linking to advertising
information (i.e., corresponding information parts) on a website (see Ans. 5
and 15-16).
Appellant’s Contentions
With respect to the first rejection supra, under § 101, Appellant
contends that claim 13 recites a computer readable media that includes
executable instructions as permitted by MPEP 2106 (Br. 11).
With respect to the second rejection supra, under § 103, Appellant
contends that the Examiner erred in rejecting claims 1 and 3-20 for
numerous reasons including: (1) Zigmond fails to disclose a data file that
maps content part addresses to content part timing; (2) Zigmond provides
direct linking of information parts to the time of transmission, while in
Appellant’s claimed invention the linking is indirect; (3) Zigmond does not
teach data that associates content part addresses with content part timing,
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and instead teaches logical address links that are addresses of information on
the Internet (e.g., URLs) as opposed to addresses of content parts (e.g.,
chapters within a title); (4) Kitsukawa fails to teach enabling synchronous
linking based on a data file that provides a correspondence between content
part addresses and timing; (5) neither Zigmond nor Kitsukawa provide an
association between content part addresses and content part timing as recited
in claims 1 and 14; and (6) the combination of Yamanaka, Zigmond, and
Kitsukawa fails to disclose (i) receiving synchronizing data that
synchronizes content parts with information parts, and (ii) creating a
composite including the content parts and associated parts, as recited in
claim 14 (Br. 7-11).
With respect to the third rejection supra, Appellant contends that the
Examiner erred in rejecting claim 2 under 35 U.S.C. § 103(a) over
Yamanaka, Zigmond, Kitsukawa, and Zigmond et al. for similar reasons as
provided with regard to the second rejection. Additionally, Appellant
contends Zigmond et al. fails to cure the deficiencies noted with regard to
Yamanaka, Zigmond, and Kitsukawa (see Br. 11).

ISSUES
Based on Appellant’s arguments, the issues are:
(1) Is claim 13 drawn to non-statutory subject matter?
(2) Did the Examiner err in rejecting claims 1-20 as being obvious
(the second and third rejections, supra) because the combination of
Yamanaka, Zigmond, and Kitsukawa fails to teach or suggest the limitations
at issue?

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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief that the Examiner has erred. We agree with
Appellant’s first contention that claim 13 is drawn to statutory subject
matter.
Claim 13 is drawn to statutory subject matter as claim 13 is limited to
a computer program product that is stored on a computer readable medium.
Because the computer program product is stored, it is non-transitory, and
thus, is statutory. See Subject Matter Eligibility of Computer Readable
Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
However, we disagree with Appellant’s conclusions regarding the
second and third rejections. We adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief (Ans. 3-17). We concur
with the conclusions reached by the Examiner with regard to the rejections
of (1) claims 1 and 3-20 under § 103(a) over the combination of Yamanaka,
Zigmond, and Kitsukawa (see second rejection, supra), and (2) claim 2
under § 103(a) over the combination of Yamanaka, Zigmond, Kitsukawa,
and Zigmond et al. (see third rejection, supra).
We disagree with Appellant’s contentions (Br. 9-11) that Kitsukawa’s
paragraph [0044] and claim 10 fail to teach enabling synchronous linking as
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recited in the claims on appeal.
1
The Examiner relies on paragraph [0044]
and claim 39 of Kitsukawa as disclosing timing data corresponding to an
advertising link (i.e., content part address) which is used to enable
synchronous linking to advertising information (i.e., corresponding
information parts) on a website (see Ans. 5 and 15-16). Kitsukawa discloses
timing data (claim 39) corresponding to an advertising link (i.e., content part
address) which is used to enable synchronous linking (see Kitsukawa, ¶
[0044] and claim 39; Ans. 5 and 15-16). Furthermore, Kitsukawa’s
displayed “advertising information” (¶ [0044]) reads on the content part data
of claims 1, 12, 13, and 14 on appeal.
In view of the foregoing, we agree with the Examiner that Kitsukawa
teaches or suggests enabling synchronous linking to advertising information
(e.g., corresponding information parts on a website) by using a data file
(where the data file includes timing data associating Internet addresses for
the advertising information with the broadcast program) to determine an
advertising link (i.e., content part address) based on the timing data (i.e.,
content part timing), and/or determining the content part timing based on the
advertising link (i.e., content part address) (Ans. 5). Notably, the “enabling
synchronous linking . . .” clause found at the end of each of independent
claims 1, 12, and 13 is recited in the alternative (note the use of the phrase
“and/or”). Thus, only one of the alternatives recited need be met by the
combination of Yamanaka, Zigmond, and Kitsukawa to satisfy the language
of claims 1, 12, and 13.

1
The Examiner relies on claim 39 of Kitsukawa, and not claim 10, as
teaching the feature of enabling synchronous linking using timing data (see
Ans. 5). Claim 39 is found at page 10 of the Kitsukawa reference, as noted
by the Examiner at page 5 of the Answer.
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Appellant’s arguments regarding whether the linking in Zigmond and
Kitsukawa is direct or indirect are not convincing because none of
independent claims 1, 12, 13, and 14 on appeal recite “indirect” linking. The
language of claims 1, 12, 13, and 14 merely requires “synchronous linking”
(claims 1, 12, and 13), or “receiving linking information” and
“synchronization data” (claim 14). The broadest reasonable interpretation of
the term “synchronous linking” encompasses Kitsukawa’s disclosure of
receiving timing data that synchronously links advertising information to a
corresponding program broadcast (see claim 39).
Appellant’s arguments regarding Zigmond are not persuasive. The
Examiner relies upon Kitsukawa, and not Zigmond for teaching synchronous
linking to corresponding information parts on a website using a data file to
determine a content part address based on the content part timing, and/or
determining the content part timing based on the content part address (Ans.
5).
Appellant’s arguments (Br. 11) regarding the rejection of claim 2 (the
third rejection supra), are not convincing for the same reasons provided
above regarding claims 1 and 3-20, i.e., Yamanaka, Zigmond, and
Kitsukawa teach or suggest all of the features of claims 1 and 14.

CONCLUSIONS
(1) The Examiner erred in determining that claim 13 is directed to
non-statutory subject matter.
(2) The Examiner did not erred in rejecting claims 1-20 as being
unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1-20 are not patentable over the cited references.
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DECISION
The decision of the Examiner rejecting claim 13 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter is reversed.
The decision of the Examiner rejecting claims 1-20 under 35 U.S.C.
§ 103 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

ELD