Ex Parte Song

Board of Patent Appeals and Interferences

Dec 22, 2009

10653929 (B.P.A.I. Dec. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte CHUN-HEE SONG 8
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10
Appeal 2009-001764 11
Application 10/653,929 12
Technology Center 3600 13
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Decided: December 22, 2009 16
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Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R. 19
MOHANTY, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
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Appeal 2009-001764
Application 10/653,929

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STATEMENT OF THE CASE 1
Chun-Hee Song (Appellant) seeks review under 35 U.S.C. § 134 (2002) 2
of a final rejection of claims 1-3 and 9-10, the only claims pending in the 3
application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We AFFIRM. 8
THE INVENTION 9
The Appellant invented a method and apparatus for preventing a 10
duplicate recording of a broadcasting program on a recording unit using 11
additional information included in broadcasting signals (Specification ¶ 02). 12
An understanding of the invention can be derived from a reading of 13
exemplary claims 1 and 10, which are reproduced below [bracketed matter 14
and some paragraphing added]. 15
1. A method of preventing a duplicate recording of a 16
broadcasting program, comprising: 17
[1] extracting additional information from a digital 18
broadcasting program and recording the additional information 19

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed April 16, 2008) and the Examiner’s Answer (“Ans.,” mailed June
11, 2008), and Final Rejection (“Final Rej.,” mailed September 12, 2007).
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separately in an additional information storage unit, the 1
additional information including title information and summary 2
information; 3
[2] before entering a recording mode, reading the additional 4
information corresponding to a to-be-recorded broadcasting 5
program from the additional information storing unit; 6
[3] searching a recording unit and determining whether the 7
recording unit stores title information corresponding to the to-8
be-recorded broadcasting program; 9
[4] if the title information corresponding to the to-be-10
recorded broadcasting program is detected from the recording 11
unit, comparing summary information included in the read 12
additional information with that stored in the recording unit in 13
connection with the detected title information, and then 14
calculating a correspondence ratio; and 15
[5] comparing the calculated correspondence ratio with a 16
predetermined reference value, and if the correspondence ratio 17
is less than the predetermined reference value, entering the 18
recording mode to enable recording of the to-be-recorded 19
broadcasting program on the recording unit. 20
21
10. The method of claim 9, wherein the title information 22
includes information on a sequence number of the to-be-23
recorded broadcasting program. 24
25
THE REJECTIONS 26
The Examiner relies upon the following prior art: 27
Yap et al. US 2001/0033736 A1 Oct. 25, 2001
Agnihotri et al. US 2002/0081090 A1 Jun. 27, 2002
Kanemitsu US 6,854,127 B1 Feb. 8, 2005
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Appeal 2009-001764
Application 10/653,929

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Claims 1-3 and 9 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Yap and Agnihotri. 2
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 3
Yap, Agnihotri, and Kanemitsu. 4
5
ISSUES 6
The issues pertinent to this appeal are: 7
• Whether the Appellant has sustained the burden of showing that the 8
Examiner erred in rejecting claims 1-3 and 9 under 35 U.S.C. § 103(a) 9
as unpatentable over Yap and Agnihotri. 10
o This pertinent issue turns on whether Yap and Agnihotri 11
describe limitations [1] and [4] of claim 1. 12
• Whether the Appellant has sustained the burden of showing that the 13
Examiner erred in rejecting claim 10 stands rejected under 35 U.S.C. 14
§ 103(a) as unpatentable over Yap, Agnihotri, and Kanemitsu. 15
o This pertinent issue turns on whether the Appellant’s arguments 16
in support of claim 9 are found persuasive. 17
18
FACTS PERTINENT TO THE ISSUES 19
The following enumerated Findings of Fact (FF) are believed to be 20
supported by a preponderance of the evidence. 21
Facts Related to the Prior Art 22
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Yap 1
01. Yap is directed to video-on-demand equipment and services. 2
Yap ¶ 0002. 3
02. Yap describes an electronic program guide (EPG) that interacts 4
with the system. Yap ¶ 0058. The EPG is enhanced with tags, 5
which include data that is associated with or otherwise describes 6
the content of a video selection. Yap ¶ 0060. For example, a tag 7
may include movie data such as starring actors, the director, 8
program title, a synopsis, release date, reviews, related programs, 9
sequels, keywords, a thumbnail, a preview, or a snippet (Yap ¶ 10
0060 and ¶ 0131). The system scans the EPG for tagged content 11
thereby allowing a user to search the EPG based on a tag or a 12
combination of tags. Yap ¶ 0061 and ¶ 0131. Tags may be in-13
band or otherwise transmitted with the content. Yap ¶ 0060. 14
Alternatively, tags maybe associated with the program or 15
otherwise sent separately such as with the electronic program 16
guide. Yap ¶ 0060. 17
03. The system further includes a duplicate episode filter. Yap ¶ 18
0133. When a user selects to record a program, the system 19
references the storage device to check certain characteristics of the 20
selected program with information stored in memory. Yap ¶ 21
0133. The system compares selected tag information with stored 22
tag information to determine if a match exists. Yap ¶ 0134. If a 23
matched is found in the memory, a duplicate notification is 24
displayed to a user. Yap ¶ 0133. The system further includes the 25
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ability to simultaneously record a program and playback another 1
previously recorded program. Yap ¶ 0139. 2
Agnihotri 3
04. Agnihotri is directed to a system and method for determining 4
whether a video program has been previously recorded by a video 5
recorder (Agnihotri ¶ 0001). 6
05. The system comprises a transcript processor that obtains a 7
transcript of an incoming video program by assembling the 8
transcription from closed caption text, text from a speech to text 9
converter, text from a third party source, or embedded screen text 10
(Agnihotri ¶ 0012). The transcript processor then compares the 11
transcript of the incoming video program with transcripts of video 12
programs that have been previously recorded by the video 13
recorder in order to determine whether the incoming video 14
program has been previously recorded by the video recorder 15
(Agnihotri ¶ 0012). If the program has been previously recorded, 16
then it is not recorded a second time (Agnihotri ¶ 0012). 17
06. When a video program ends, the video recorder controller stops 18
recording the video and assembles a transcript of the newly 19
recorded video (Agnihotri ¶ 0053). The new transcript is added to 20
a transcript database located in a plurality of transcript storage 21
locations (Agnihotri ¶ 0053). The controller may further send the 22
transcript to a hard disk to for storage (Agnihotri ¶ 0053). 23
24
25
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Kanemitsu 1
07. Kanemitsu is directed to an improvement in recording 2
functionality of broadcast content in a broadcast receiving 3
apparatus (Kanemitsu 1:7-11). 4
Facts Related To The Level Of Skill In The Art 5
08. Neither the Examiner nor the Appellant has addressed the level 6
of ordinary skill in the pertinent art video broadcasting and 7
receiving systems. We will therefore consider the cited prior art as 8
representative of the level of ordinary skill in the art. See Okajima 9
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he 10
absence of specific findings on the level of skill in the art does not 11
give rise to reversible error ‘where the prior art itself reflects an 12
appropriate level and a need for testimony is not shown’”) 13
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 14
F.2d 158, 163 (Fed. Cir. 1985). 15
Facts Related To Secondary Considerations 16
09. There is no evidence on record of secondary considerations of 17
non-obviousness for our consideration. 18
PRINCIPLES OF LAW 19
Obviousness 20
A claimed invention is unpatentable if the differences between it and 21
the prior art are “such that the subject matter as a whole would have been 22
obvious at the time the invention was made to a person having ordinary skill 23
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in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 1
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 2
In Graham, the Court held that that the obviousness analysis is 3
bottomed on several basic factual inquiries: “[(1)] the scope and content of 4
the prior art are to be determined; [(2)] differences between the prior art and 5
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 6
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 7
U.S. at 406. “The combination of familiar elements according to known 8
methods is likely to be obvious when it does no more than yield predictable 9
results.” KSR, 550 U.S. at 416. 10
ANALYSIS 11
Claims 1-3 and 9 rejected under 35 U.S.C. § 103(a) as unpatentable 12
over Yap and Agnihotri 13
The Appellant first contends that (1) Yap and Agnihotri fail to describe 14
extracting additional information from a digital broadcasting program and 15
recording the additional information separately, as required by limitation [1] 16
of claim 1. App. Br. 10-13. We disagree with the Appellant. Yap describes 17
an electronic program guide that interacts with the system and categorizes 18
information in the digital broadcast. FF 02. Yap further describes that 19
information from a digital broadcasting program that is associated with the 20
electronic program guide is stored in tags. FF 02. The tag is either in-band, 21
transmitted and associated with the program itself, or can be sent separately 22
such as with the electronic program guide. FF 02. The Appellant argues 23
that the tags are not extracted from the program (App. Br. 11), however, a 24
person with ordinary skill in the art would have known that in order to use 25
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tags that are in-band, the tags must be extracted from the band. The 1
Appellant further contends that the tags are provided by an outside source. 2
App. Br. 11. The claim does not require specific origin for the extracted 3
information and as such the Appellant’s argument that the tag is provided by 4
an outside source is not persuasive. 5
Agnihotri describes a system that assembles a transcript of a program 6
and stores the transcript separately from the program in a transcript database. 7
FF 05-06. The transcript is additional information of a digital broadcasting 8
program and assemble of such information requires an extraction of 9
information from the broadcast program. Agnihotri explicitly describes that 10
the transcripts are stored in a transcripts database and other storage locations 11
such as on hard disk. FF 06. As such, Yap and Agnihotri describe 12
extracting additional information from a digital broadcast program and 13
storing the additional information separately, required by claim 1. 14
The Appellant also contends that (2) Yap fails to describe that two 15
separate characteristics are used in determining if a duplicate program exists, 16
as limitation [4] of claim 1 requires a match between title information and 17
summary information. App. Br. 13. We disagree with the Appellant. Yap 18
describes a duplicate episode filter feature that determines whether a 19
program selected for recording already exists in memory. FF 03. Yap 20
specifically describes that characteristics, such as tag information, can be 21
used to determine whether a match exists. FF 03. Yap further describes that 22
tag characteristics for title information and a synopsis are provided for 23
programs. FF 02. That is, certain characteristics, such as title and synopsis 24
information, can be used to determine whether a match for a program 25
selected for recording already exists. The Appellant contends that Yap is 26
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only concerned with matching a single characteristic (App. Br. 13), 1
however, Yap describes that multiple characteristics for a program can be 2
used to determine if a match exists (FF 03). As such, Yap describes 3
comparing title and summary information to determine whether a match 4
exists. 5
The Appellant has not sustained the burden of showing that the 6
Examiner erred in rejecting claims 1-3 and 9 under 35 U.S.C. § 103(a) as 7
unpatentable over Yap and Agnihotri. 8
9
Claim 10 rejected under 35 U.S.C. § 103(a) as unpatentable over Yap, 10
Agnihotri, and Kanemitsu 11
The Appellant contends that claim 10 depends from claim 9 and is 12
patentable for the same reasons asserted in support of claim 9 supra. App. 13
Br. 14. We disagree with the Appellant. The Appellant’s arguments in 14
support of claim 9 were not found to be persuasive supra and are not 15
persuasive here for the same reasons. As such, the Appellant has not 16
sustained the burden of showing that the Examiner erred in rejecting claim 17
10 under 35 U.S.C. § 103(a) as unpatentable over Yap, Agnihotri, and 18
Kanemitsu. 19
20
CONCLUSIONS OF LAW 21
The Appellant has not sustained the burden of showing that the 22
Examiner erred in rejecting claims 1-3 and 9 under 35 U.S.C. § 103(a) as 23
unpatentable over Yap and Agnihotri. 24
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The Appellant has not sustained the burden of showing that the 1
Examiner erred in rejecting claim 10 under 35 U.S.C. § 103(a) as 2
unpatentable over Yap, Agnihotri, and Kanemitsu. 3
4
DECISION 5
To summarize, our decision is as follows. 6
• The rejection of claims 1-3 and 9 under 35 U.S.C. § 103(a) as 7
unpatentable over Yap and Agnihotri is sustained. 8
• The rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable 9
over Yap, Agnihotri, and Kanemitsu is sustained. 10
11
No time period for taking any subsequent action in connection with this 12
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 13
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AFFIRMED 15
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