Ex Parte SongDownload PDFBoard of Patent Appeals and InterferencesDec 22, 200910653929 (B.P.A.I. Dec. 22, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 1 ___________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte CHUN-HEE SONG 8 ___________ 9 10 Appeal 2009-001764 11 Application 10/653,929 12 Technology Center 3600 13 ___________ 14 15 Decided: December 22, 2009 16 ___________ 17 18 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 23 Appeal 2009-001764 Application 10/653,929 2 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). Appeal 2009-001764 Application 10/653,929 3 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 28 Appeal 2009-001764 Application 10/653,929 4 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 Appeal 2009-001764 Application 10/653,929 5 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 Appeal 2009-001764 Application 10/653,929 6 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 Appeal 2009-001764 Application 10/653,929 7 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 Appeal 2009-001764 Application 10/653,929 8 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 Appeal 2009-001764 Application 10/653,929 9 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 Appeal 2009-001764 Application 10/653,929 10 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 Appeal 2009-001764 Application 10/653,929 11 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 14 AFFIRMED 15 16 17 mev 18 19 Address 20 SUGHRUE MION, PLLC 21 2100 PENNSYLVANIA AVENUE, N.W., SUITE 800 22 WASHINGTON DC 20037 23 24 Copy with citationCopy as parenthetical citation