Ex Parte Rhoads et al

Patent Trial and Appeal Board

May 29, 2013

11614947 (P.T.A.B. May. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/614,947 12/21/2006 Geoffrey B. Rhoads P1253 1164
23735 7590 05/30/2013
DIGIMARC CORPORATION
9405 SW GEMINI DRIVE
BEAVERTON, OR 97008
EXAMINER
TIMBLIN, ROBERT M
ART UNIT PAPER NUMBER
2157
MAIL DATE DELIVERY MODE
05/30/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GEOFFREY B. RHOADS, TONY F. RODRIGUEZ,
and KENNETH L. LEVY
____________________

Appeal 2010-011874
Application 11/614,947
Technology Center 2100
____________________

Before: ERIC B. CHEN, MICHAEL J. STRAUSS, and HUNG H. BUI,
Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011874
Application 11/614,947
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a rules driven metadata routing system and
network.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A routing system for receiving a request for metadata for a
content object and directing a metadata response, the system
comprising:
one or more programmed computers including:
an ID resolver programmed to receive a content identifier
extracted from the content object, and programmed to
determine associated metadata responses and a rule governing
the metadata responses;
a rules processor programmed to execute the rule to
determine a subset of the metadata responses; the routing
system programmed to initiate the subset of metadata responses
in response to the request and execution of the rule.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Diab

Gheorghe

US 2005/0216454 A1

US 7,231,419B1

Sep. 29, 2005

Jun. 12, 2007
(filed Oct. 19, 2001)

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REJECTIONS1
Claims 1-18 and 20-26 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Diab. Ans. 3.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Diab and Gheorghe. Ans. 12.

ISSUE2
Whether Diab discloses “a content identifier extracted from the
content object,” as recited in Appellants’ independent claim 1.

ANALYSIS
Appellants contend that “Diab's teaching of a URL is not equivalent to
the claimed content identifier of claim 1because it is not extracted from a
content object.” App. Br. 9. Appellants argue that while “[t]he Office has
cited a web page in Diab as the content object of claim 1, . . . there is no
teaching that the URL of this web page is extracted from the web page.” Id.
The Examiner responds,
that by returning URLs of a web page, that a content identifier (URL)
is extracted from the content object. In other words, Diab's search
retrieves a URL from a web page and presents it in search results (see
Diab, 0013 wherein a user ’receives in response a list of identifiers
(e.g. URLs) of related content items in the corpus or actual items of
content form the corpus.’). Thus, while the URL is retrieved and not
the page itself, it can be seen as extracted.

1 Based on the dependencies of the claims and the dispositive issue, we
decide the appeal of the rejection of claims 1-26 on the basis of claim 1.
2 We note that Appellants’ arguments present additional issues; however, we
do not reach these issues, as this issue is dispositive of the appeal.
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Ans. 14. We disagree with the Examiner. In particular, while Diab discloses
retrieving and returning a URL of a web page, on the record before us we do
not find that Diab discloses retrieving a URL of a web page from that web
page.
We begin our analysis by construing the term “extracted.” Claim
terms are given their broadest reasonable interpretation consistent with the
specification In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). The words of the claims are given their plain meaning unless the
plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989); Chef America, Inc. v. Lamb-Weston, Inc., 358
F.3d 1371, 1372 (Fed. Cir. 2004) (Ordinary, simple English words whose
meaning is clear and unquestionable, absent any indication that their use in a
particular context changes their meaning, are construed to mean exactly
what they say.)
Appellants’ Specification fails to provide a definition of “extracted.”
In such a case wherein the specification does not assign or suggest a
particular definition to a claim term, it is appropriate to consult a general
dictionary definition of the word for guidance in determining the ordinary
and customary meaning of the claim term as viewed by a person of ordinary
skill in the art. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir.
2010). Webster’s Encyclopedic Unabridged Dictionary of the English
Language, Random House Value Publishing, Inc. (1996) includes among its
various definitions for “extract” to get, pull, or draw out, usually with special
effort, skill, or force.
Based on the referenced definition, we find that claim 1 requires the
content identifier be gotten, pulled, or drawn out from the content object and,
as such, that the content identifier must be found within the content object so
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as to enable its extraction therefrom. Applying this definition to Diab, the
URL corresponding to the claimed content identifier must be found within
the corresponding content item or web page corresponding to the claimed
content object.
On the record before us, we are unable to identify any URL within the
web page as disclosed by Diab. Absent evidence that Diab discloses a
content identifier within the content object with the content identifier gotten,
pulled or drawn out from the content object, the disputed limitation of claim
1 is not disclosed by Diab. While the Examiner asserts that “[b]ecause the
URLs of the web pages are listed (see Diab's paragraph 0013) from the web
pages, they can be seen as extracted” (Ans. 16), absent disclosure that the
URLs were gotten, pulled, or drawn out from the respective web pages the
mere listing of the URLs in association with the corresponding web pages is
insufficient to support a finding of anticipation.
For the reasons supra, we do not sustain the rejection of claim 1 under
35 U.S.C. § 102(e) and, for the same reason, we do not sustain the rejection
of independent claims 9, 14, 17, and 22 and dependent claims 2-8, 10-13, 15,
16, 18, and 20-26. Furthermore, we do not sustain the rejection of claim 19
under 35 U.S.C. § 103(a) as being unpatentable over Diab and Gheorghe as
the Gheorghe reference fails to cure the deficiency in the base rejection
addressed supra.

CONCLUSION
Appellants have persuaded us of error in the Examiner’s decision to
reject claims 1-18 and 20-26 under 35 U.S.C. § 102(e) as being anticipated
by Diab and to reject claim 19 under 35 U.S.C. § 103(a) over Diab and
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Gheorghe. Thus, we will not sustain the Examiner's rejections of claims 1-
26.

DECISION
The decision of the Examiner to reject claims 1-26 is reversed.

REVERSED

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