Ex Parte Morris

Board of Patent Appeals and Interferences

Mar 25, 2010

10996668 (B.P.A.I. Mar. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT P. MORRIS
____________
Appeal 2008-004908
Application 10/996,6681
Technology Center 2100
____________
Decided: March 25, 2010
____________

Before JEAN R. HOMERE, STEPHEN C. SIU, and DEBRA K.
STEPHENS, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 Filed on November 24, 2004. The real party in interest is Scenera
Technologies, LLC. (Br. 3.)
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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of claims 1 through 20. (Br. 5.)2 We have
jurisdiction under 35 U.S.C. § 6(b) (2008).
We affirm.
Appellant’s Invention
Appellant invented a method, system, and computer readable medium
for creating a metadata repository for multimedia objects. (Spec. 1, para.
[002].) In particular, the metadata includes a service URL associated with a
multimedia object. (Spec. 2, para. [009].) A client device utilizes the
service URL to access a service profile application in order to retrieve a
service profile. (Id.) The service profile describes the services available to
the multimedia object and, further, how to invoke these services. (Id.)
According to Appellant, the claimed invention provides both information
and services related to the multimedia object. (Id.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. A method for providing metadata for multimedia objects,
comprising:
determining if metadata associated with a multimedia
object comprises a service uniform resource locator (URL);
receiving a service profile for the multimedia object
utilizing the service URL, if the metadata comprises the service
URL, wherein the service profile describes at least one service
for the multimedia object; and
making at least one service described in the service
profile available.

2 All references to the Appeal Brief are to the Supplemental Appeal Brief
filed on October 30, 2007, which replaced the prior Appeal Brief filed on
October 2, 2007.
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Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Porter 2002/0099737 A1 Jul. 25, 2002
Weschler 6,920,455 B1 Jul. 19, 2005
(filed May 19, 1999)

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
Claims 16 through 20 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 1 through 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Porter and Weschler.
Appellant’s Contentions
1. Appellant argues that independent claim 16 is directed to
statutory subject matter because a computer readable medium imparts
functionality executed on a machine, such as a computer. (Br. 14-15.)
2. Appellant contends that Porter discloses the uniform resource
locator (“URL”) of a media file, which includes a media URL and referring
URL, whereas the claimed invention includes a “service URL,” as recited in
independent claims 1, 12, and 16. (Br. 15-17.) Further, Appellant argues
that Weschler’s disclosure of a profile service is distinct and separate from a
profile that includes user data and, therefore, does not teach receiving “a
service profile,” as recited in independent claims 1, 12, and 16. (Id. at 17-
18.) Appellant also alleges that Porter’s disclosure of a cache log, or a log of
web sites that other users have accessed, does not teach “a service profile”
that “describes at least one service for the multimedia object,” as claimed.
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(Id. at 18-19.) Additionally, Appellant contends that Weschler’s disclosure
of implementing profile service instances in separate local environments
does not teach that the service that is made available is described in the
service profile for the multimedia object. (Id. at 19-20.) Finally, Appellant
argues that there is insufficient rationale for the proffered combination. (Id.
at 20-21.)
Examiner’s Findings and Conclusions
1. The Examiner avers that independent claim 16 is directed to
non-statutory subject matter because Appellant admits in the Supplemental
Appeal Brief that the claimed computer readable medium includes an
electromagnetic carrier signal embodied in a carrier wave. (Ans. 12-13.)
2. The Examiner finds that Porter’s disclosure of metadata
associated with a media object, whereby the metadata includes web page
content, URLs, and media files, teaches that the metadata associated with a
multimedia object comprises a URL. (Ans. 13-14.) Further, the Examiner
finds that Weschler’s disclosure of profile services that perform the
functions of creating, searching, and retrieving amount to the same functions
performed by the “service profile,” as recited in independent claims 1, 12,
and 16. (Id. at 15.) The Examiner also finds that Weschler’s disclosure of
accessing the profile service instance to request profile services, in
conjunction with Porter’s disclosure of manually generating a set of web
page URLs and processing proxy cache logs, teaches “receiving a service
profile” and “the multimedia object utilizing the service URL,” as recited in
independent claims 1 and 16. (Id. at 15-16.) Additionally, the Examiner
finds that Weschler’s disclosure of implementing profile services in a
separate local environment amounts to making a service available before
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implementing the service and, therefore, teaches “making at least one
service described in the service profile available,” as claimed. (Id. at 16-17.)
Finally, the Examiner finds that there is sufficient rationale for the proffered
combination. (Id. at 17-18.)

II. ISSUES
1. Has Appellant shown that the Examiner erred in finding that “a
computer readable medium with program instructions for providing
metadata for multimedia objects,” as recited in independent claim 16, is
directed to non-statutory subject matter?
2. Has Appellant shown that the Examiner erred in concluding
that the combination of Porter and Weschler renders independent claim 1
unpatentable? In particular, the issue turns on whether there is sufficient
rationale for the proffered combination and whether the references teach:
(a) “determining if metadata associated with a multimedia object
comprises a service uniform resource locator (URL),” as recited in
independent claim 1;
(b) “receiving a service profile for the multimedia object utilizing
the service URL, if the metadata comprises the service URL, wherein the
service profile describes at least one service for the multimedia object,” as
recited in independent claim 1; and
(c) “making at least one service described in the service profile
available,” as recited in independent claim 1.

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III. FINDINGS OF FACT
The following Findings of Fact (“FF”) are shown by a preponderance
of the evidence.
Appellant’s Admission
1. Appellant states in the Supplemental Appeal Brief that:
‘computer readable medium,’ is a well known term that refers
to any medium that can contain, store, communicate, propagate,
or transport instructions for use by or in connection with an
instruction execution system, apparatus, machine, or device.
The computer-readable medium can be, for example but is not
limited to, an electronic, magnetic, optical, electromagnetic,
infrared, or semiconductor system, apparatus, device, or
propagation medium.

(Br. 14.)
Porter
2. Porter generally relates to computer related search and retrieval
and, in particular, to the quality of multimedia and streaming media
metadata. (1: para. [0002].) In particular, Porter discloses “improving the
quality of original metadata associated with media on a computer network
includ[ing] analyzing each field of the URL of the media. Each field is
analyzed to identify new metadata associated with each field.” (Id. at para.
[0009].) Further, Porter discloses that sources of metadata include web page
content, URLs, media files, and transport streams used to transmit media
files. (2: para. [0026].)
3. Porter’s Figure 6 depicts a flow diagram of the metadata
extraction and database retrieval process. (5: para. [0042].) For example,
“assume the spider 66 finds a media file containing a music song.” (Id. at
para. [0043].) The extracting agent (68) extracts the metadata, parses the
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metadata, and indexes the metadata into the following fields: referring URL,
media URL, title, and performer of song. (Id.)
Weschler
4. Weschler generally relates to enterprise computing systems and
methods and, in particular, to providing a high performance tool to integrate,
store, retrieve and manage reference information about entities. (Col. 1, ll.
9-13.) Weschler’s claimed invention is “particularly useful in environments
that require a data structure that is quickly searched and where the data is
suited to a hierarchical representation.” (Col. 5, ll. 9-11.)
5. Weschler’s discloses that a profile is “[a] collection of attributes
related either directly or indirectly to a EntityProfile that contains data or
links to data used by an entity.” (Col. 5, ll. 32-34.)
6. Weschler’s Figure 2 depicts a diagram of a distributed
computing environment that implements the profile services. (Col. 7, ll. 23-
25.) Weschler discloses that “[e]ach profile service instance is implemented
in a separate local environment (e.g., a [local area network] LAN or stand-
alone environment)….” (Id. at ll. 27-29.) In particular, Weschler discloses
that “[a] client application 204 accesses the profiles service instance 201 to
request profile services. The profile service instance 201, performs the
requested service using the profile data store 206.” (Id. at ll. 31-34.) Each
profile service instance is associated with a data store, respectively. (Id. at
ll. 34-36.)
7. Weschler’s Figure 3 depicts a profile services application
program interface (“API”) (303) that provides three basic functions. (Id. at
ll. 50-51.)
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First, the profiles services API 303 provides “factory” methods
for creating profiles. Second the profiles services API 303
provides search and L retrieve methods for accessing existing
profiles. Third, the profile services API 303 provides
management utilities for defining schemas.

(Id. at ll. 51-56.)

IV. PRINCIPLES OF LAW
Statutory Subject Matter
Our reviewing court has recently held that transitory, propagating
signals, such as carrier waves, are not within any of the four statutory
categories (process, machine, manufacture or composition of matter) of
patentable subject matter. Therefore, a claim directed to computer
instructions embodied in a signal is not statutory under 35 U.S.C. § 101. In
re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
Obviousness
“On appeal to the Board, an applicant can overcome a rejection [under
§ 103] by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.” In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)
(citation omitted).
Section 103 forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior
art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
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In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and discussed circumstances in which a patent might be determined to
be obvious. Id. at 415 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 416.
The operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 415, 417.

V. ANALYSIS
35 U.S.C. § 101 Rejection
Independent claim 16 recites, in relevant part, “a computer readable
medium with program instructions for providing metadata for multimedia
objects.”
As set forth above, Appellant admits that a computer readable
medium is any medium that can contain, store, communicate, propagate, or
transport instructions, including an electronic, magnetic, optical,
electromagnetic, or infrared propagation medium. (FF 1.) We find that
independent claim 16 encompasses the use of a computer data signal
embodied in a carrier wave, which contains, stores, communicates,
propagates, or transports instructions. A computer data signal embodied in a
carrier wave is a transitory, propagating signal not within any of the four
statutory categories and, therefore, non-statutory. See In re Nuijten, 500
F.3d at 1357. It follows that Appellant has not shown that the Examiner
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erred in rejecting independent claim 16 as being directed to non-statutory
subject matter.
Appellant has not separately argued dependent claims 17 through 20.
Consequently, dependent claims 17 through 20 fall with independent claim
16. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).

35 U.S.C. § 103(a) Rejection
Claims 1, 12, and 16
Independent claim 1 recites, in relevant part:
determining if metadata associated with a multimedia
object comprises a service uniform resource locator (URL);
receiving a service profile for the multimedia object
utilizing the service URL, if the metadata comprises the service
URL, wherein the service profile describes at least one service
for the multimedia object; and
making at least one service described in the service
profile available.

As detailed in the Findings of Fact section, Porter discloses searching
and retrieving metadata associated with media on a computer network and,
further, analyzing each field of the media URL in order to identify new
metadata. (FF 2.) In particular, Porter discloses extracting metadata from a
media file, parsing the metadata, and indexing the metadata into a referring
URL field and a media URL field. (FF 3.) We find that Porter’s disclosure
of metadata associated with computer media and, further, extracting,
parsing, and indexing the metadata into corresponding URL fields, teaches
“determining if metadata associated with a multimedia object comprises a
service uniform resource locator (URL),” as recited in independent claim 1.
In particular, we find that an ordinarily skilled artisan would readily
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appreciate utilizing Porter’s disclosure of a referring URL to access and
retrieve information or services regarding the computer media.
Next, Weschler discloses integrating, storing, retrieving, and
managing reference information about entities. (FF 4.) In particular,
Weschler discloses that a client interfaces with a profile service API which
is capable of creating, searching, and retrieving profile services. (FF 7.)
Further, Weschler discloses that a client application accesses a profile
service instance to request profile services. (FF 6.) The profile service
instance performs the requested service utilizing respective attributes,
including data and corresponding links. (FF 5-6.)
We find that Weschler’s disclosure teaches creating, retrieving, and
searching service profiles that contain attributes, including data and
corresponding links, pertinent to invoking a service for an entity. We also
find that Weschler’s disclosure teaches performing a requested service. In
particular, we find that an ordinarily skilled artisan would appreciate that a
client could perform services for computer media by utilizing Porter’s
disclosure of a referring URL to access and retrieve Weshcler’s service
profiles that contain attributes pertinent to invoking a service. Thus, we find
that the combined disclosures of Porter and Weschler teach “receiving a
service profile for the multimedia object utilizing the service URL, if the
metadata comprises the service URL, wherein the service profile describes at
least one service for the multimedia object,” as recited in independent claim
1.
We also find that an ordinarily skilled artisan would understand that
Weschler’s disclosure of retrieving and searching a service profile and,
further, performing a requested service, amounts to making a service in the
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profile available before performing the respective service. Thus, we find
that Weschler’s disclosure teaches “making at least one service described in
the service profile available,” as recited in independent claim 1.
Rationale to Combine
The Supreme Court instructs that:
[o]ften it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in a the fashion claimed
by the patent at issue.

KSR, 550 U.S. at 418. Upon reviewing the record before us, we find more
than adequate suggestion for the proposed modification in the prior art. We
find that an ordinarily skilled artisan in multimedia object art at the time of
invention would have used Porter’s disclosure of parsing and indexing
metadata associated with computer media into corresponding URL fields, in
conjunction with Weschler’s disclosure of creating, retrieving, and searching
service profiles that contain attributes pertinent to invoking a service, in
order to provide information in a hierarchical representation that can be
quickly searched. (FF 4; see also Ans. 17-18.)
Additionally, as set forth above, Porter’s disclosure teaches metadata
associated with computer media and, further, extracting, parsing, and
indexing the metadata into corresponding URL fields, including a referring
URL. See disc. supra. at 10-11. Weschler’s disclosure complements Porter
by creating, retrieving, and searching service profiles that contain attributes
pertinent to invoking a service for an entity and, subsequently, performing a
requested service. See disc. supra. at 11. We find that the combined
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disclosures of Porter and Weschler teach prior art elements that perform
their ordinary functions to predictably result in providing a metadata
repository for a multimedia object which sets forth both information and
services pertaining to the multimedia object. See KSR, 550 U.S. at 418-19.
Thus, Appellant’s argument that there is insufficient rationale to justify the
proffered combination is unavailing. It follows that Appellant has not
shown that the Examiner erred in concluding that the combination of Porter
and Weschler renders independent claim 1 unpatentable.
Appellant does not provide separate arguments for patentability with
respect to independent claims 12 and 16. Therefore, we select independent
claim 1 as representative of the cited claims. Consequently, Appellant has
not shown error in the Examiner’s rejection of independent claims 12 and 16
for the reasons set forth in our discussion of independent claim 1. See 37
C.F.R. § 41.37(c)(1)(vii) (2008).
Claims 2, 4, 6, 17, 18, and 20
Appellant does not set forth any substantive arguments, but rather
makes a general allegation that the cited text does not teach the language of
dependent claims 2, 4, 6, 17, 18, and 20. (Br. 22-24.) Appellant is reminded
that a statement that merely points out what the claim recites will not be
considered as an argument for separate patentability of a claim. 37 C.F.R. §
41.37(c)(1)(vii). Appellant is further reminded that a general allegation that
the claim defines a patentable invention without specifically pointing out
how the language of the claims patentably distinguishes them from the
references does not constitute a persuasive response. 37 C.F.R. § 1.111(b).
Therefore, Appellant’s arguments are unpersuasive. It follows that
Appellant has not shown that the Examiner erred in concluding that the
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combination of Porter and Weschler renders dependent claim 2, 4, 6, 17, 18,
and 20 unpatentable.
Claims 3, 5, 7 through 11, 13, through 15, and 19
Appellant does not provide separate arguments for patentability with
respect to dependent claims 3, 5, 7 through 11, 13 through 15, and 19.
Therefore, we select independent claims 1, 12, and 16 as representative of
the cited claims. Consequently, Appellant has not shown error in the
Examiner’s rejection dependent claims 3, 5, 7 through 11, 13 through 15,
and 19 for the reasons set forth in our discussion of independent claims 1,
12, and 16. See 37 C.F.R. § 41.37(c)(1)(vii).

VI. CONCLUSIONS OF LAW
1. Appellant has not shown that the Examiner erred in rejecting
claims 16 through 20 as being directed to non-statutory subject matter under
35 U.S.C. § 101.
2. Appellant has not shown that the Examiner erred in rejecting
claims 1 through 20 as being unpatentable under 35 U.S.C. § 103(a).

VII. DECISION
1 We affirm the Examiner’s decision to reject claims 16 through
20 as being directed to non-statutory subject matter under 35 U.S.C. § 101.
2. We affirm the Examiner’s decision to reject claims 1 through
20 as being unpatentable under 35 U.S.C. § 103(a).

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) (2009).
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AFFIRMED

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