Ex Parte Kimble

Board of Patent Appeals and Interferences

Jun 18, 2008

09835300 (B.P.A.I. Jun. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID MICHAEL KIMBLE
____________

Appeal 2008-0519
Application 09/835,300
Technology Center 2600
____________

Decided: June 18, 2008
____________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI,
and KARL EASTHOM, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 114-117. Claims 1-113 have been canceled. (Br. 2). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Appellant’s claimed invention relates to a method and system for
generating a video-on-demand (VOD) event. (Spec. 4).
Claim 114 is illustrative of the invention and reads as follows:

114. A method for providing video-on-demand, comprising:
using a TV system to present to a user’s Web browser a list of links,
each link corresponding to a respective piece of television video-on-
demand;
receiving a selection of a link;
in response to the selection, sending a protocol file to the TV system,
the protocol file including a TV channel corresponding to the video-on-
demand associated with the selection and a size and location of a video layer
within a markup language layer; and
causing a channel tuner of the TV system to tune to the TV channel
corresponding to the video-on-demand associated with the selection.

The Examiner relies on the following prior art references to show
unpatentability:
Fries US 6,317,885 B1 Nov. 13, 2001
Schumacher US 6,757,907 B1 June 29, 2004
Zigmond US 7,076,792 B2 Jul. 11, 2006

Claims 114-117 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fries in view of Schumacher and Zigmond.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Appellant argues claims 114-117 as a group and focuses on
independent claim 114 (App. Br. 3-9). Therefore, we select claim 114 as
representative of the group. Arguments which Appellant could have made
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but chose not to make in the Briefs have not been considered and are
deemed to be waived. 37 C.F.R. § 41.37(c) (1) (vii).

ISSUE
The issue is whether the Examiner erred in determining that the
collective teachings of Fries, Schumacher and Zigmond meet claim 114.

FINDINGS OF FACT (FF)
1. Appellant’s disclosed system transmits data parameters in a
protocol file, identified as a Session Description Protocol (“SDP”) file, to a
recipient’s television system to specify, among other things, the size and
location of a media on demand (MOD) television broadcast 270 layer within
a Hyper Text Markup Language (HTML) layer 260. (See Figs. 6b-6d, Spec.
19: 16 to 21:16).
2. In Zigmond’s system, “background video image 210 is
incorporated into the foregoing HTML page along with HTML image 220
for display on video display 200.” (Col. 3, ll. 61-64, Fig. 2). The video
includes broadcast TV for display on a “full-screen TV” (col. 8, l. 3), “home
entertainment system” (col. 4, l. 48), or otherwise generic television using a
set-top box (col. 2, ll. 23-37; col. 3, l. 59-67).
3. Web authors in Zigmond’s system provide TV tags transmitted in
the HTML page to control the relative positions of the background image
and the video image, the size of the image, and the channel of TV broadcast
video (abstract, col. 2, l. 55 to col. 3, l. 11; col. 5, l. 43 to col. 6, l. 14; col. 7,
ll. 33-55). “Like other types of HTML tags, TV tags can include associated
attributes. For TV tags, these attributes include channel number or network
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designation, image width, image height, ‘full screen’ (i.e., ignore width and
height), input source, z position, and image transparency.” (Zigmond, col. 5,
ll. 47-52).
4. Zigmond’s z attribute controls the apparent relative positions of a
background or immersed television content with respect to an HTML layer
as follows:
The relative position of the TV object is determined
using z-ordered (three dimensional) cascading style sheets. As
is known in the art, cascading style sheets allow HTML authors
to include typographical information to define how a Web page
should appear. The present invention makes use of a z attribute
supported by cascading style sheets to determine the apparent
relative positions of background television and overlaying
HTML content. To establish broadcast television as
background, the z attribute of the TV tag is, in one
embodiment, set to “Z= - 1.”

(Col. 5, ll. 58-67).

5. Fries’s server 46 provides, in response to user selections, Internet
content pages rendered on HTML pages having meta-data for each page,
allowing the display of the pages on a television (col. 3, l. 66 to col. 4, ll. 28).
“Each page image consists of a single frame MPEG2 video sequence. . . . The
meta-data for each page describes the structure and contents of the page
image.” (Col. 4, ll. 20-24). A link that automatically or otherwise causes a
set-top box to tune immediately or later to a channel providing video,
including pay-per-view video, can be provided as or supported by meta-data
in any HTML page and (col. 18, l. 6-42).

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PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing,
the Examiner must make the factual determinations set forth in Graham v.
John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). Furthermore,
‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).

“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (quoting KSR, 127 S. Ct. at 1739).

ANALYSIS
Appellant first disputes the Examiner’s finding that Zigmond teaches
the claim 114 limitation: “a protocol file including a TV channel
corresponding to the video-on-demand associated with the selection and a
size and location of a video layer within a markup language layer.” (App.
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Br. 4-9, Ans. 6). More specifically, Appellant argues that columns 2-4 of
Zigmond do not mention video, or any portion within a page being dedicated
to video. (App. Br. 4-5). We disagree. We find that Zigmond’s system
provides a television video layer 210 within the markup language (HTML)
layer 220 (Abstract, Figs. 2-3, FF 2-4, col. 2, ll. 63-67, col. 3, ll. 59-67, col.
4, ll. 21-29). For example, Figure 3, described at column 4, depicts “a
system 300 for blending a graphic overlay window with a background video
image . . . . [which] might represent a television program or other cable,
broadcast, satellite, or graphic presentation.” (Zigmond, col. 4, ll. 30-37).
Appellant also argues that Zigmond does “not teach anything about a
location of a video layer within a markup language layer.” (App. Br. 5, see
also App. Br. 8, Reply Br. 4). This dispute appears to be over the
Examiner’s determination that Zigmond’s z position attribute corresponds to
the claimed “protocol file includes . . . a . . . location (interpreted as position,
z position) of a video layer (TV image) within a markup language layer.”
(See Ans. 9).
We concur with the Examiner’s determination that Zigmond’s z
position attribute corresponds to the disputed location element (FF 3, 4).
Appellant’s statement that “‘width’ and height’. . .are nowhere said to be in
any relationship with a coordinate system” (App. Br. 4-5) not only is not
commensurate in scope with the claim because no coordinate system is
claimed, but the statement does not directly address the Examiner’s
determination that Zigmond’s disclosed z attribute corresponds to the
claimed location element.
We find that the z attribute specifies the apparent position or location
of the markup layer in relation to the television video (FF 3, 4). In Zigmond,
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a negative z value renders the whole television video image as overlaid by
the HTML markup layer (FF 4). Our finding and determination are
consistent with Appellant’s Specification which states that the disclosed
Figure 6D embodiment “represents a MOD or VOD session where the video
layer is positioned over the entire the HTML layer.” (Spec. 21:5-
6)(emphasis added). “The concepts of ‘background’ and ‘overlay’ are not
physical, but refer instead to the apparent positions of displayed images.”
(Zigmond, col. 7, ll. 13-15)).
We also determine, as the Examiner did, that Zigmond’s markup
language layer (HTML) TV tags containing the z attribute, and similarly,
containing image height and width, and TV channel attributes, for rendering
a displayed TV broadcast in a Web page, constitute a protocol file including
a TV channel, size and location in the manner claimed (see col. 3, ll. 47-67,
col. 5, ll. 43-52, FF 3-4, Ans. 6, 9). Therefore, we also are not persuaded by
Appellant’s argument that the isolated passage at Zigmond, column 2, lines
4-11 (specifying position, size etc., attributes within tags for elements in a
document) refers only to the size and location of text fonts (App. Br. 4). We
find that the passage generically refers to tags and attributes specifying video
image location and size, which a TV object or motion picture also requires
(see FF 3, 4; see also n. 1).1 Consequently, we are not persuaded by

1 We also note that Zigmond’s image 220 (Fig. 2), which may include video
“motion pictures,” is blended with a TV video 210 by using transparency
information (Zigmond, col. 2, ll. 45-47; col. 4, ll. 21-29). We find such an
image 220 as depicted in Fig. 2 at the upper left-hand corner necessarily
requires or suggests “a protocol file including . . . a size and location of a
video layer within a markup language layer” in order to create the disclosed
different levels of transparency involved in the two areas 220 and 210. We
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Appellant’s related conclusory statement that columns 3 and 4 do not
disclose “a protocol file that includes a TV channel of a selected link and a
size and location of a video layer within a markup language layer” (App. Br.
5).
Appellant also argues that “in none of the relied-upon portions of
Zigmond et al. is it taught that a protocol file is sent to a TV system.” (App.
Br. 5). As indicated supra, the Examiner determined that Zigmond’s
“HTML protocol with tags” constitutes a protocol file (Ans. 9), but the
Examiner asserted Fries for a teaching of sending the protocol to a TV
system in response to a link selection (Ans. 9-10). We generally agree with
the Examiner, but we also determine that Zigmond cumulatively teaches
sending a protocol to a TV system in the manner claimed. Zigmond
discloses the protocol file as discussed above (FF 3). Further, contrary to
Appellant’s assertion, we find that Zigmond’s tags, created by a Web
content provider, are sent in an HTML document to a television system such
as a set top box, full screen TV, generic television, or entertainment system,
etc., for display (FF 2-3).
We also determine that Zigmond, at a minimum, at least suggests all
the claim limitations. Zigmond, disclosing “surfing the Net” (col. 1, l. 47)2
with a TV system (as discussed supra) reasonably teaches the first two steps
of “using a TV system . . . to present . . . a list of links, each link
corresponding to a respective piece of television video on demand; [and]

also determine, under an alternative claim interpretation, that the claim does
not require “a video layer” to correspond to the “video-on-demand.”
2 Zigmond’s system specifically incorporates the prior art methods and
functions such as “surfing” described generally at column 1 and Figure 1
(col. 5, ll. 9-11).
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receiving a selection of a link” as claimed. Similarly, Zigmond, at col. 7, ll.
33-55 reasonably teaches the last step of “causing a channel tuner of the
TV system to tune to the TV,” by disclosing that “users execute hyperlinks .
. . by selecting them with a mouse or other pointing device . . . [and] [i]f the
selected hyperlink includes a TV URL . . .then the view object examines a
channel attribute of the TV URI to determine which channel should be
displayed.” Or, after a link selection and reception by surfing, a
hyperlinked TV channel is selected (i.e., tuned) automatically upon
uploading of a selected Web page that is synchronized with respect to the
TV broadcast (id.). In other words, a selection and reception (obtained by
surfing thereby meeting the first two steps) of one of Zigmond’s links to a
Web HTML based page having TV attributes as protocols ultimately causes
tuning to the channel link in the TV attribute, thereby meeting the last claim
step, either by pointing or automatically. Alternatively, even if displaying
the selected Web based TV channel video (see Fig. 7, FF 2) does not
constitute “tuning” as claimed, Fries discloses such tuning as the Examiner
determined (see FF 5, Ans. 10).
Turning to the claimed third step, we determine that selecting a TV
channel or a Web page having a TV channel constitutes the claimed “video-
on-demand” because the selected or demanded material is broadcast media
as opposed to being “purchased . . . media in a permanent format” (Spec. 3:
4). Thus, our determination is consistent with Appellant’s Specification (see
Spec. 3: 1-8). Finally, Zigmond also teaches the third claimed step of
sending a protocol file in response to a link selection by surfing as discussed
supra (see also FF 2-4).
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We also concur with the Examiner’s cumulative finding that Fries
discloses sending protocols to a TV system in response to a link selection
(Ans. 9-11, FF 5). Appellant makes several arguments regarding this
finding (App. Br. 5-9). The basis for Appellant’s arguments appears to be
that Fries discloses two different types of video: 1) “video information
representing Web pages, not television VOD as claimed,” (App. Br. 6), and
2) video from a “video channel” (App. Br. 8). 3 Respectively regarding these
two different video types, Appellant states: “the Office Action persists in
failing to grasp that the relied-upon metadata and PSI data for the HTML
pages [video type 1] are isolated in Fries et al. from the relied-upon tuning of
the set-top box to a video channel [video type 2] in column 18.” (App. Br.
8) (See also App. Br. 6-7).
The video types thus separated, Appellant parses each one for its
asserted shortcomings (i.e., asserting no “video layers” or “video link” in the
type 1 Web page, and no location, or position data in a mark-up layer for the
type 2 video channels (App. Br. 5-6)), and concludes that Fries does not

3 Appellant’s statements regarding the first type of Web page image video
are difficult to understand. Appellant argues that Fries’s Web pages both do
and do not include video information (see App. Br. 6, second full paragraph
– compare “video information representing Web pages” with “displaying
web pages and only web pages, without any video layers within them”).
Contrary to Appellant’s related conclusory assertions otherwise (App. Br. 7-
8, Reply Br. 4), we find that Fries teaches meta-data constituting a protocol
file including size and location data of video images in a Web page markup
(HTML) layer. For example, button border and focus images (i.e., as
opposed to text information) broadly constitute video (graphic) images (in
an MPEG video sequence – see FF 5) that require such size and location
information to create the page (see Fig. 6, col. 15, ll. 33-52; and generally
cols. 21-22 (disclosing “COORDS” corresponding to the location/size of
focus and button images)).
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teach sending a protocol in response to a link selection (App. Br. 6), and also
concludes that there is no suggestion to combine Fries with Zigmond and
Schumacher (App. Br. 7). We disagree.
As to sending protocol files in response to a link selection, Fries
states: “For example, a new page might be displayed when a link is selected.
The video information includes meta-data or the like associated therewith
for providing information about the active location and the action to be taken
upon selection thereof.” (Col. 2, ll. 32-36 (emphasis added), see also FF 5).
Therefore, we concur with the Examiner’s statement as factually supported:
“the protocol file (meta data and/or PSI data) must be sent to the TV system
in order to render the display of the selected program element in response to
user selection of a link on the web browser.” (Ans. 10).
Further, Appellant’s assertions (App. Br. 7) that Fries does not teach
size and location protocol data for the second type of “video-on-demand”
(VOD) video presupposes that the claim requires it. However, we
determine, under one claim interpretation as indicated above (see n. 1
supra), that the claim only reasonably requires “size and location of a video
layer” (i.e., the first type taught by Fries as implicitly admitted by
Appellant), and, does not require such size and location data for the second
type (i.e., video-on-demand). And, since Fries discloses a selectable link to
a video-on-demand channel in any HTML page4, such a page thereby

4 We disagree with Appellant’s assertion that the Examiner is “plain wrong”
in finding that Fries’s statement “‘for any page, it is possible to include a
link’” teaches the link as included in the category of meta-data (App. Br. 8-9
(citing Fries, col. 18 generally, and ll. 6-7, specifically), Ans. 4-5). Blair’s
description of the link includes (see col. 18, ll. 23-42) the following; an
“ACTION URL” is created and “[a]t [page conversion time, this URL is
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necessarily includes the disclosed pages having protocol file location and
size attributes for a separate (first type) video layer (see FF 5, n. 3).
Therefore, Fries, teaches the alleged missing claim elements.5
In other words, Appellant’s parsing of Fries’s video types does not
distinguish the claim since the claim does not necessarily require “video-on-
demand” and “a video layer” to constitute the same video data. Even if it
does, Fries teaches sending protocols to a TV system as discussed supra, and
further, Fries’s asserted shortcomings do not defeat its combination with
Schumacher and Zigmond as proposed by the Examiner. For example,
Appellant’s argument that since Fries does not teach video in a markup
layer, or size and location defined by a protocol file, that “one would [not]
be motivated to download something from Zigmond that Fries does not
need” (Reply Br. 4) lacks the factual predicate regarding what Fries teaches.
Regardless, even if Appellant is correct, the opposite conclusion is more
reasonable; i.e., one would have been motivated to employ Zigmond to
supply what Appellant asserts Fries is missing - protocol file size, location,
and channel elements – in order to create predictably and beneficially a

recognized, and meta-data for the page indicate that the form query string
should be submitted to the guide for processing.” (Col. 18, ll. 31-32
(emphasis added)). Moreover, regardless of its characterization as meta-
data, such a link reasonably constitutes protocol data in the manner claimed
because it provides channel information to a pay-per-view television event
(col. 18, ll. 18-22), i.e., video-on-demand. Appellant’s related argument
(App. Br. 8-9) that since pay-per-view must be paid for before a channel is
caused to be tuned does not mean that the channel is not caused to be tuned
in the manner claimed (see FF 5). Regardless, Zigmond’s “currently
available programs” (col. 18, ll. 17-22) also constitute video-on-demand.
5 We also concur with the Examiner’s determination that Fries teaches the
claim steps as outlined in the Answer (Ans. 3-5, 10).
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display of Fries’s transmitted television video on a single HTML Web page
for user convenience, as the Examiner determined (Ans. 6).
Appellant’s further assertions that data is read from the Set Top Box
(STB) (App. Br. 6) does not constitute evidence or a supporting argument
that the data was not downloaded to the STB in response to selection of a
link. Moreover, as noted above, Fries teaches sending a protocol file, such
as meta-data embedded in an HTML page, in response to a user’s selection
of a link (see FF 5, n. 4 supra).
We also disagree with Appellant’s argument that Fries and/or
Zigmond do not teach a TV system. (App. Br. 9). Appellant appears to
recognize that Fries teaches a TV system (see e.g. App. Br. 8, noting Fries’s
“tuning of the set-top-box”). We also find that the Fries system presents
Web pages to a television system (FF 5) and “provides an interactive
television system including a head-end having means for injecting video
information into a transmission medium” (col. 2, ll. 19-21). Zigmond
teaches a similar TV system (FF 2).
We also are not persuaded by Appellant’s further statements (App. Br.
7, 9; Reply Br. 1-4) which we characterize as generally attacking, without
supporting argument or evidence, the Examiner’s reasons for combining the
references.6 Appellant has not presented a convincing or meaningful
argument that persuades us of error in the Examiner’s findings with which
we concur that Schumacher suggests video-on-demand (VOD) (Ans. 5, App.
Br. 9) and that Zigmond suggests the claimed protocol file of a video layer

6 We also do not agree with Appellant’s implied argument (Reply Br. 1-4)
that the prohibition of attacking references individually as enunciated in In
re Keller, 642 F.2d 413 (CCPA 1981) and In re Merck & Co., Inc., 800 F.2d
1091 (Fed. Cir. 1986) is limited to the facts involved in those cases.
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within a markup language (Ans. 6, see Reply Br. 4). Therefore, we concur
with the Examiner’s determination that it would have been obvious to
modify Fries as taught by Schumacher and Zigmond to transmit immediate
video-on-demand video with HTML images in the form of a single HTML
page by selection of a link on the screen to improve the convenience to users
(Ans. 5-6).
According to Leapfrog, if the combination of familiar elements
according to methods known to the skilled artisan, such as the combination
of familiar video types and protocols for dictating the location of images,
videos or text, achieves a predictable result of rendering a video in a desired
portion of a Web mark up page, it is likely to be obvious.
In view of the above discussion, since Appellant has not convinced us
of error in the Examiner’s determination, we sustain the Examiner’s
35 U.S.C. § 103(a) rejection of independent claim 114, as well as claims
115-117 not separately argued by Appellant.

CONCLUSION
We sustain the Examiner’s rejections of claims 114-117.
Accordingly, the Examiner’s decision rejecting claims 114-117 is affirmed.

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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) (2006).

AFFIRMED

KIS

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