Ex Parte Kohut et al

Patent Trial and Appeal Board

Jan 23, 2014

10109798 (P.T.A.B. Jan. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL KOHUT, LARRY GOODMAN,
MARK KOFFMAN, and JIM MERCS
____________________

Appeal 2011-002464
Application 10/109,798
Technology Center
____________________

Before DAVID M. KOHUT, JASON V. MORGAN, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-3,5-13, 16, 17, 19-21, 23-30, 33-40, and 55-60. Claims
4, 14, 15, 18, 22, 31, 32, 41-54 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection under the provisions
of 37 C.F.R. § 41.50(b).
Appellants’ Invention
Appellants’ invention relates to a system and method for managing
content items, such as, music or movies, by generating metadata related to
the content item, storing the content item and the related metadata, and
maintaining a virtual link between the content item and the related metadata
so as to facilitate retrieval of the content item. The metadata is generated
corresponding to that content item while recording at least part of a live
presentation so that the metadata may be highly accurate and may include
information about the development of the particular content item. See Spec.
¶¶ [0001] and [0021].

Illustrative Claim
Independent claim 1 further illustrates the invention as follows, with
some paragraphing and disputed elements highlighted in italics:
1. A method for managing a plurality of content items,
wherein each content item of the plurality of content items
includes, at least in part, a recording of a live presentation, the
method comprising:

(a) for each content item of the plurality of content items,
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(1) generating metadata corresponding to that content item

(2) while recording at least part of a live presentation;

(b) storing the plurality of content items;

(c) storing and associating the metadata corresponding to
said each content item of the plurality of content items,

(d) wherein the metadata is stored and associated with the
corresponding content item while said each content item is being
recorded; and

(e) retrieving stored content items based at least in part on the
metadata associated with the content items, which was associated
while said each content item was being recorded.

Rejections on Appeal
Claims 1-3, 5-13, 16, 17, 19-21, 23-30, 33-40 and 55-60 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by Landeck (US
6,782,394 B1, Aug. 24, 2004, filed Sep. 25, 2000). Ans. 3-7.
Claims 1-3, 5-13, 16, 17, 19-21, 23-30, 33-40 and 55-60 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Landeck in
view of Omoigui (US 7,305,384 B2, Dec. 4, 2007; filed Nov. 30, 2004).
Ans. 8-12.

Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claims
1-3, 5-13, 16-17, 19-21, 23-30, 33-40, and 55-60 under 35 U.S.C. § 102(e)
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because Landeck fails to disclose steps (a)(1) and (a)(2) of independent
claim 1. Br. 5-12. In particular, Appellants contend that Landeck does not
disclose “generating metadata corresponding to that content item while
recording at least part of a live presentation.” Br. 6.

2. Appellants contend that the Examiner erred in rejecting claims
1-3, 5-13, 16-17, 19-21, 23-30, 33-40, and 55-60 under 35 U.S.C. § 103(a),
because the combination of Landeck and Omoigui fails to disclose
requirements (a)(1) and (a)(2) of independent claim 1. Br. 17-18.

Issues1
Did the Examiner err in rejecting claim 1 as being anticipated because
Landeck fails to describe the argued limitations?
Did the Examiner err in rejecting claim 1 as being obvious because
the combination of Landeck and Omoigui fails to teach or suggest the
argued limitations?

Analysis
We agree with Appellants’ above contentions 1 and 2.
Regarding the anticipation rejection of claim 1, Landeck is cited by
the Examiner for disclosing a TV newscast “which is inherently a live
presentation at one point.” Ans. 13. Appellants argue that Landeck does not

1 Appellants makes additional arguments with respect to claims 1, 6, 7, 10,
17, 24, and 25. Br. 12-16. We do not reach the merits of these additional
arguments because these issues are dispositive of the appeal.
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disclose generating metadata while recording but discloses “adding metadata
after the data has been created” Br. 10 (citing Landeck, col. 15, ll. 53-
55). We agree with Appellants as our interpretation of the disclosure of
Landeck coincides with that of Appellants. The Examiner apparently agrees
with Appellants that in Landeck, metadata is inserted once data objects are
produced. Ans. 4.
The Examiner has not sufficiently shown (Ans. 12), nor do we find,
that Landeck discloses the disputed limitation of claim 1.
Regarding the obviousness rejection of claim 1, we find no basis for
the Examiner’s determination (Ans. 9) that Omoigui teaches the disputed
limitation. Ans. 9. Appellants contend, and we agree, that Omoigui merely
teaches live presentation searching on a search server, not generating
metadata corresponding to the content item while recording at least part of a
live presentation. Br. 17. The Examiner has not provided sufficient evidence
showing how Omoigui cures the deficiencies of Landeck, nor has the
Examiner answered Appellants’ particular arguments directed toward
Omoigui.
As such, we cannot sustain the Examiner’s rejection of claim 1, and
independent claim 16, which recites commensurate limitations. Since we
have reversed each independent claim on appeal, we also reverse the
rejection of each associated dependent claim.

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CONCLUSIONS
The Examiner erred in rejecting claims 1-3, 5-13, 16, 17, 19-21, 23-
30, 33-40, and 55-60 under 35 U.S.C. § 102(e) as being anticipated by
Landeck.
The Examiner erred in rejecting claims 1-3, 5-13, 16, 17, 19-21, 23-
30, 33-40, and 55-60 under 35 U.S.C. § 103(a) as being unpatentable over
Landeck and Omoigui.

NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b). Claims 1 and 16 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Landeck and Fuller (U.S.
6,833,865 B1; Dec. 21, 2004; filed July 29, 1999).
As discussed above, we agree with Appellants that Landeck does not
disclose generating and storing metadata while recording at least part of a
live presentation. We also agree with Appellants that Omoigui does not cure
the noted deficiency. Nevertheless, this feature was well-known at the time
of the invention, as exemplified by Fuller, which is directed to embedded
metadata engines in digital capture devices. Specifically, Fuller teaches the
embedding of a video engine directly inside camera equipment to extract
metadata from a video signal and produce both digital video content and “a
corresponding package of metadata which is time indexed to describe the
video content.” Fuller, col. 3, ll. 45-67. Fuller teaches triggering metadata
extraction when recording begins (i.e., as a result of a record function “on”
event). Id. at col. 7, ll. 51-67 and Fig. 4. Thus, Fuller teaches or suggests
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generating and storing metadata while recording at least part of a live
presentation. Fuller also teaches metadata capture as far “upstream” as
possible is valuable to “allow the metadata to be exploited throughout the
lifecycle of the content, thereby reducing costs and improving access to and
utilization of the content. Id.at col. 2, ll. 13-16. Therefore, it would have
been obvious to an artisan of ordinary skill to modify the techniques of
Landeck to capture metadata as far upstream as possible by including
metadata generation and storage while recording at least part of a live
presentation. Accordingly, we newly reject claim 1 under 35 U.S.C.
§ 103(a) as being unpatentable over Landeck and Fuller. Appellants note
that “claim 16 recites substantially similar limitations as recited in claim 1.”
App. Br. 16. Thus, we find that Fuller also cures the noted deficiency of
Landeck with respect to claim 16. Accordingly, we also newly reject claim
16 under 35 U.S.C. § 103(a).

OTHER ISSUES
The Patent Trial and Appeal Board is a review body rather than a
place of initial examination. We have made a new rejection regarding
independent claims 1 and 16 under the provisions of 37 C.F.R. § 41.50(b).
However, we have not reviewed the remaining claims 2, 3, 5-13, 17, 19-21,
23-30, 33-40, and 55-60 to the extent necessary to determine whether these
claims are unpatentable over the combination of Landeck and Fueller, or
other prior art. We leave it to the Examiner to determine the appropriateness
of any further rejections based on these or other references. Our decision not
to enter a new ground of rejection for all claims should not be considered as
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an indication regarding the appropriateness of further rejection or allowance
of the non-rejected claims.

DECISION
We reverse the Examiner’s rejections of claims 1-3, 5-13, 16, 17, 19-
21, 23-30, 33-40, and 55-60 as set forth above.
We newly reject claim 1 and 16 under 35 U.S.C. § 103(a).
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record. . . .
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).

REVERSED
37 C.F.R. § 41.50(b)

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