Ex Parte Nielsen

Board of Patent Appeals and Interferences

Jul 29, 2002

08885801 (B.P.A.I. Jul. 29, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAKOB NIELSEN
__________
Appeal No. 2000-0962
Application 08/885,801
___________
ON BRIEF
___________
Before JERRY SMITH, FLEMING and BARRY, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s final rejection of claims 1-15, 17-22 and 26.
Claims 16 and 23 have been cancelled. Claims 24 and 25 were
indicated to contain allowable subject matter. An amendment
after final rejection was filed on June 23, 1999 but was denied
entry by the examiner. Appellant has withdrawn the appeal with
respect to claims 1, 6, 7, 12 and 17 [brief, page 2]. Therefore,
this appeal is now directed to the rejection of claims 2-5, 8-11,
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Application 08/885,801
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13-15, 18-22 and 26.
The disclosed invention pertains to a method and
apparatus for automatically capturing network addresses, such as
Internet addresses, from live broadcast video such as television.
Representative claim 20 is reproduced as follows:
20. A system for retrieving information, comprising:
a. a network;
b. at least one server connected to said network having
information stored thereon; and
c. computer apparatus, connected to said network,
configured to receive an image from a video signal, to
automatically identify a network address contained in said image
and to use said address to retrieve information from a server
over said network.

The examiner relies on the following references:
Fitzpatrick et al. (Fitzpatrick) 5,262,860 Nov. 16, 1993
Hidary et al. (Hidary) 5,774,664 June 30, 1998
(filed Mar. 25, 1996)
Claims 2, 4, 8, 13-15 and 18-22 stand rejected under 35
U.S.C. § 102(b) as being anticipated by the disclosure of
Fitzpatrick. Claims 3, 5, 9-11 and 26 stand rejected under 35
U.S.C. § 103. As evidence of obviousness the examiner offers
Fitzpatrick and Hidary.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
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Application 08/885,801
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respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of anticipation and obviousness relied upon by the examiner as
support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the
appellant’s arguments set forth in the briefs along with the
examiner’s rationale in support of the rejections and arguments
in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon supports each of the rejections
made by the examiner. Accordingly, we affirm.
We consider first the rejection of claims 2, 4, 8, 13-15
and 18-22 under 35 U.S.C. § 102(b) as being anticipated by the
disclosure of Fitzpatrick. Anticipation is established only when
a single prior art reference discloses, expressly or under the
principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of
performing the recited functional limitations. RCA Corp. v.
Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L.
Appeal No. 2000-0962
Application 08/885,801
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Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554,
220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
The basis for this rejection of the claims is set forth
on pages 2-5 of the final rejection which has been incorporated
into the examiner’s answer [answer, page 4]. Before arguing each
of the claims individually, appellant makes several general
observations about Fitzpatrick. Specifically, appellant argues
that Fitzpatrick does not disclose how to identify an address
automatically because Fitzpatrick requires a manual user input of
a template, and because Fitzpatrick requires the user to manually
assure that a telephone number has been captured [brief, pages 5-
7]. The examiner responds that the manual operations in
Fitzpatrick are optional, and the optical character recognition
process in Fitzpatrick automatically identifies or recognizes the
network address from the video image [answer, pages 5-6].
With respect to these general observations, we agree with
the examiner that Fitzpatrick discloses the step of automatically
identifying at least one network address contained in the image.
The information read by the optical character recognition device
in Fitzpatrick is automatically analyzed and stored in computer
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processor 66 [steps 94, 102 and 112]. As noted by the examiner,
the manual use of a template and the manual verification of the
data are both optional steps as indicated by a negative template
defines response and a negative verification display response in
Figure 3 of Fitzpatrick.
With respect to claim 2, appellant argues that
Fitzpatrick only stores data in a separate step after a user has
selected the option of storing the data, and does not
unconditionally store the text as part of storing the image
[brief, page 7]. The examiner responds by explaining how the
Fitzpatrick device meets the language of claim 2 [answer, pages
6-7].
We agree with the examiner. As shown in Figure 3 of
Fitzpatrick, the step of “store data with image” (step 112) is
always performed as long as there is text or number information
found within the image and the user wishes to have such
information stored. The invention of claim 2 is, therefore, met
by Fitzpatrick at the option of the user. We sustain the
rejection of claim 2.
With respect to claim 4, appellant argues that
Fitzpatrick does not teach or suggest a parser [brief, page 7].
The examiner responds that the step of reading text and numbers
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in Fitzpatrick constitutes a parsing of the text or data to
identify one or more network addresses [answer, page 7].
This argument appears to hinge on the definition of
parsing. We agree with the examiner that the step of reading
text and numbers in Fitzpatrick constitutes a parsing of the
items of data to identify one or more network addresses.
Therefore, we sustain the rejection of claim 4.
With respect to claim 8, appellant argues that
Fitzpatrick teaches to store a single frame when a user issues a
command and not more than one sequential frame [brief, page 7].
The examiner responds by explaining how sequential frames are
disclosed by Fitzpatrick [answer, page 8]. We agree with the
examiner for reasons explained by the examiner in the answer.
Therefore, we sustain the rejection of claim 8.
With respect to claim 13, appellant makes the same
argument we considered above with respect to claim 2. Therefore,
we sustain the rejection of claim 13 for the same reasons
discussed above.
With respect to claim 14, appellant argues that
Fitzpatrick does not teach or suggest that the apparatus
downloads, uses or otherwise accesses the information at the
other site [brief, page 8]. The examiner responds by explaining
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how the connection in Fitzpatrick meets the language of claim 14
[answer, pages 9-10]. We agree with the examiner for reasons
stated in the answer. Therefore, we sustain the rejection of
claim 14.
With respect to claim 15, appellant argues that
Fitzpatrick does not teach deriving a second image from the first
image or storing the second image [brief, page 8]. The examiner
responds by explaining how the language of claim 15 reads on the
disclosure of Fitzpatrick [answer, pages 10-11]. We agree with
the examiner as explained in the answer. Therefore, we sustain
the rejection of claim 15.
With respect to claims 18-22, appellant makes arguments
that were considered above with respect to previously considered
claims. Therefore, we sustain the rejection of claims 18-22 for
reasons discussed above.
Appellant has requested that we make a recommendation
under 37 CFR § 1.196(c) that claims 1, 12, 17 and 20 would be
allowable if amended by inserting the phrase “arbitrarily long”
before the first occurrence of “network address” in each of these
claims [brief, page 9]. We decline to make such a recommendation
because the factual findings relevant to such a recommendation
are not present on this record.
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We now consider the rejection of claims 3, 5, 9-11 and 26
under 35 U.S.C. § 103 based on Fitzpatrick and Hidary. 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. See In re Fine, 837 F.2d 1071, 1073,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the examiner
is expected to make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227
USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017
(1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
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Application 08/885,801
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Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
by appellant [see 37 CFR § 1.192(a)].
The examiner’s rejection is set forth on pages 5-8 of the
final rejection which has been incorporated into the examiner’s
answer. Appellant argues that although Hidary teaches obtaining
a uniform resource locator (URL) network address from a video
program signal, the URL is not located in a portion of the image
which is perceptible to the human eye, and is therefore, opposite
to the claimed invention. Appellant also argues that the
examiner has not provided a proper technical reason or motivation
to combine the teachings of Fitzpatrick and Hidary [brief, pages
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Application 08/885,801
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9-11]. The examiner responds that Fitzpatrick teaches using data
such as a telephone number, address, or other textual or
numerical information. Hidary is cited to teach that it was
known to search for URL addresses in a video signal. We agree
with the examiner that it would have been obvious to the artisan
to extend the teachings of Fitzpatrick to identify URL addresses
transmitted as part of the image. We also note that Fitzpatrick
searches for any text or numbers in the video image. Thus,
Fitzpatrick would already detect the presence of URL addresses
which are included within a video image.
With respect to claim 3, appellant argues that neither
Fitzpatrick nor Hidary performs the validity check as recited in
claim 3 [brief, page 11]. The examiner responds that the
checking of the spelling of a network address in Hidary broadly
constitutes a step of checking the validity of the network
address. We agree with the examiner that the invention as
broadly recited in claim 3 would have been obvious over the
teachings of Fitzpatrick and Hidary. Therefore, we sustain the
rejection of claim 3.
With respect to claims 5, 9-11 and 26, appellant argues
features which were discussed above and that Hidary does not
teach URL addresses taken from the image [brief, pages 11-12].
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In addition to the responses discussed above, the examiner
responds that appellant is improperly attacking the references
individually [answer, pages 16-18].
We agree with the position argued by the examiner. When
video images include URL addresses, the apparatus of Fitzpatrick
will automatically read this information as noted above. We
agree with the examiner that the artisan would have been
motivated to look for URL addresses for reasons taught by Hidary.
Therefore, we sustain the rejection of claims 5, 9-11 and 26.
In summary, we have sustained each of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 2-5, 8-11, 13-15, 18-22 and 26 is
affirmed.
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Application 08/885,801
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2000-0962
Application 08/885,801
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McDERMOTT, WILL & EMERY
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