Ex Parte Sharma et al

Patent Trial and Appeal Board

Feb 12, 2016

13100446 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/100,446 05/04/2011
25537 7590 02/17/2016
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
Sudhanshu Sharma
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20100865 2982
EXAMINER
CASTRO, ALFONSO
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
02/17/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUDHANSHU SHARMA and NEENA PANDEY
Appeal2014-003610
Application 13/100,446
Technology Center 2400
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
CATHERINE SHIANG, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003610
Application 13/100,446
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Introduction
According to Appellants, the invention relates to the generation and
insertion of an identifier according to an interactive content specified within
an extended data services field of an advertisement video. Abstract.
Exemplary Claims
Independent claim 1 is reproduced below:
1. A method comprising:
generating an identifier according to an interactive
content specified within an extended data services field of an
advertisement video; and
inserting the identifier into a media stream to indicate to
a set-top box presence of the interactive content, wherein the
media stream represents the advertisement video,
wherein the generating and inserting are performed at a
device located between a headend system configured to
transmit the advertisement video and a set-top box, and
wherein the device includes a first module that detects
extended data services data provided from the headend, a
second module that generates the identifier for insertion into the
media stream, and a third module the performs a multiplexing
function of the identifier and video signal of the media stream.
Rejections
Claims 1-3 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Forster (US 2007/0074079 Al, May 29, 2007) and Levy
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Application 13/100,446
(US 2002/0162118 Al, Oct. 31, 2002), in further view of Carlucci (US
2004/0040035 Al, Feb. 26, 2004). Final Act. 3---6.
Claims 4 and 13-19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Forster, Levy, and Carlucci, in further view of Moore (US
2001/0047298 Al, Nov. 29, 2001). Final Act. 6-8.
Claims 5 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Forster, Levy, and Carlucci, in further view of Sparrell
(US 2007/0136742 Al, June 14, 2007). Final Act. 8-9.
Claims 7-9 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Forster, Levy, and Carlucci, in further view of Barrett (US
2009/0320063 Al, Dec. 24, 2009). Final Act. 9-11.
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Forster, Levy, Carlucci, and Barrett, in further view of Moore. Final
Act. 11-12.
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Forster, Levy, Carlucci, and Barrett, in further view of Sparrell. Final
Act. 12-13.
Appellants' Contentions1
1. Appellants contend that Forster, Levy, and Carlucci do not teach or
suggest "wherein the generating and inserting are performed at a
device located between a headend system configured to transmit the
1 Appellants focus their contentions on claim 1, and advance no separate,
substantive arguments for the remaining rejected claims 2-20. (App. Br. 5-
6). Arguments not made are considered waived. See 37 C.F.R. §
41.37(c)(l)(iv).
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Application 13/100,446
advertisement video and a set-top box," as recited in independent
claims 1, 7, 13, and 17 (hereinafter "disputed feature"). App. Br. 9
(emphasis ours). Appellants further contend that the generation and
insertion of the identifier in Carlucci and Foster is performed at a
device which is located preceding a headend system. App. Br. 9.
2. Appellants also contend that Levy is non-analogous prior art to
Forster and Carlucci, as Levy is directed to using digital watermarks
insertion, while Forster and Carlucci utilize Vertical Blanking
insertion. Reply Br. 3--4.
3. Appellants contend that the Examiner applied impressible hindsight
reading using Appellants' disclosure as a guide to modify Forster and
Carlucci. Reply Br. 4.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner has erred. Further, we have reviewed the
Examiner's response to representative claims 1, 7, 13, and 17 that have been
argued by the Appellants.
We disagree with Appellants' conclusions. We adopt as our own
( 1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner's Answer (Ans. 2-13) in response to Appellants' Appeal Brief
(App. Br. 6-10). We concur with the conclusions reached by the Examiner.
However, we highlight and address specific findings for emphasis as
follows.
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Arguments made for the first time in the Reply Brief that could have
been presented in the Appeal Brief to rebut rejections made in the Final
Office Action are waived and not considered. See 37 C.F.R. § 41.41(b)(2)
("Any argument raised in the reply brief which was not raised in the appeal
brief, or is not responsive to an argument raised in the examiner's answer,
including any designated new ground of rejection, will not be considered by
the Board for purposes of the present appeal, unless good cause is shown.").
As to contention 1, we agree with the Examiner's analysis (Ans. 9-
10) in response to Appellants' arguments. The Examiner relies upon Levy
for teaching the disputed feature. In particular, the Examiner finds, and we
agree:
Levy's invention recognizes the benefit of enabling a feature
wherein the content creator, content owner, distributor, or any
other involved in the path of the content from creation to the
end user can influence the iTV experience. By Levy
identifying that the distributor or any other involved in the path
of the content creation to the end user, a skilled artisan \'l/ould
have inferred that the generating and inserting can be
accomplished at the head-end or can be accomplished at any
point in the distribution that is prior to being received by a
decoder in the consumer's set-top box.
In essence, the fact that Levy suggests that any other
party in the path of the distribution would be able to generate
and insert identifiers suggests distribution can be any point
prior to being received by a consumer, receiver, or detector.
Id. at 10 (emphasis ours) (footnotes omitted).
For essentially the same reasons articulated by the Examiner (id.), we
find Levy's description (that any party involved in the distribution chain
from creation to the end user could influence the iTv experience) teaches or
suggests the disputed feature.
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Application 13/100,446
We observe that Appellants' Reply Brief does not rebut the
Examiner's findings regarding Levy.
As to contention 2, we find Appellants' contention unpersuasive, and
instead agree with the Examiner's finding that Levy and Carlucci are
analogous art, because both Levy and Carlucci relate to digital insertion or
embedding technologies, i.e., the same field of endeavor. 2 In particular,
Levy at paragraph 36 describes:
There are many suitable digital watermarking techniques
known to those of ordinary skill in the art, and such techniques
may be suitably employed with the present invention, so long as
the technology provides data carrying capacity to accommodate
a content identifier. Digital watermarking may also be used in
connection with VB! line insertion ....
And at paragraph 37, "Many will be described below involving specific
discussions of using digital watermarks and IDs, but are applicable to IDs in
VB! lines" (emphasis ours).
Appellants concede Forster and Carlucci relate to Vertical Blanking
insertion. See Reply Br. 3-4. Thus, the Examiner's finding that Forster,
Levy, and Carlucci are directed to insertion is reasonable because the
references teach techniques that are applicable to Vertical Blanking Interval
insertion.
2 Prior art is analogous where: 1) the prior art is from the same field of
endeavor as the claimed invention; or 2) is "reasonably pertinent" to the
problem faced by the inventor. (In re Bigio, 381F.3d1320, 1325-26 (Fed.
Cir. 2004). To be "reasonably pertinent," art must "logically commend
itself' to an inventor's attention in considering his problem. In re Icon
Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007)(citing In
re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). See also MPEP §
2141.0l(a).
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As to contention 3, we disagree with Appellants' argument that the
proposed combination of Forester, Levy, and Carlucci is motivated by
impermissible hindsight. (Reply Br. 3--4). We are cognizant that our
reviewing courts have not established a bright-line test for hindsight. The
U.S. Supreme Court guides that "[a] factfinder should be aware, of course,
of the distortion caused by hindsight bias and must be cautious of arguments
reliant upon ex post reasoning." KSR Int'! Co. v. Teleflex, Inc., 550 U.S.
398, 421 (2007) (citing Graham v. John Deere Co. of Kansas City, 383 U.S.
1, 36 (1966)). Nevertheless, the Court has also qualified the issue of
hindsight by stating "[r]igid preventative rules that deny factfinders recourse
to common sense, however, are neither necessary under our case law nor
consistent with it." KSR, 550 U.S. at 421.
In the present case, we see the hindsight question before us as a
balancing test, specifically balancing whether: (1) the Examiner's proffered
combination of references is merely "the predictable use of prior art
elements according to their established functions" (KSR, 550 U.S. at 417),
consistent with common sense; or (2) an artisan would not have reasonably
combined the cited references in the manner proffered by the Examiner but
for having the benefit of the claim to use as a guide (i.e., impermissible
hindsight).
After reviewing the respective teachings and suggestions of the cited
references, we find the preponderance of the evidence shows the proffered
combination is merely a predictable use of prior art elements according to
their established functions. We further note Appellants have not provided
any objective evidence of secondary considerations, which our reviewing
court guides, "operates as a beneficial check on hindsight." Cheese Systems,
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Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725 F.3d 1341, 1352
(Fed. Cir. 2013). Therefore, on this record, we are not persuaded the
Examiner engaged in impermissible hindsight, as Appellants contend. Reply
Br. 4. Moreover, Appellants have not demonstrated the Examiner's
proffered combination of references would have been "uniquely challenging
or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418).
For the reasons set forth above, we agree with the Examiner (Ans. 13)
that the combination of Forester, Levy, and Carlucci would have taught or
suggested all of the contested limitations of representative claim 1 to one of
ordinary skill in the art. Dependent claims 2, 3, and 6, also rejected under
the first-stated ground of rejection, fall with representative claim 1. See 37
C.F.R. § 41.37(c)(l)(iv).
Remaining Rejected Claims under§§ 103
Regarding the remaining claims rejected under § 103, Appellants urge
these claims are patentable by virtue of their respective dependencies from
claim 1 (and the remaining independent claims 7, 13, and 1 7 which recite
limitations commensurate to claim 1 ). (App. Br. 5---6).
However, we find no deficiencies regarding the first-stated rejection
of independent claim 1. Appellants focus their contentions on claim 1, and
advance no separate, substantive arguments for the remaining rejected
claims 2-20. (App. Br. 5---6). Arguments not made are considered waived.
See 37 C.F.R. § 41.37(c)(l)(iv). See n.1. supra.
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Accordingly, on this record, and by the preponderance of evidence,
we are not persuaded of error regarding the Examiner's rejections of claims
1-20 under §103.
DECISION
The decision of the Examiner rejecting claims 1-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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