Ex Parte Watanabe

Board of Patent Appeals and Interferences

Oct 19, 2009

10398579 (B.P.A.I. Oct. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KOICHIRO WATANABE
____________

Appeal 2009-005796
Application 10/398,579
Technology Center 2400
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Decided: October 19, 2009
____________

Before JOHN C. MARTIN, JOSEPH F. RUGGIERO, and KARL D.
EASTHOM, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 12-14, 16-22, and 24-27, which are all of the pending claims. Claims
1-11, 15, and 23 have been canceled. An oral hearing was conducted on this
appeal on October 6, 2009. We have jurisdiction under 35 U.S.C. § 6(b).
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We affirm.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Brief (filed June 13, 2008), the Answer (mailed July
31, 2008), and the Reply Brief (filed March 16, 2009) for the respective
details. 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 Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellant’s Invention
Appellant’s invention relates to the provision of data stream contents
to a client terminal in which a service server divides the data stream contents
into a plurality of data streams. Each of the content streams includes
important information, such as commercial content, that the service server
requires the client terminal user to view before having access to following
stream content. During viewing of the stream content, the playback rate of
the important information is monitored and access to the content following
the important information is not permitted if the user fails to view the
important information at a certain playback rate. (See generally Spec. 6:6-
20 and 10:11-25).

Representative claim 12 is reproduced as follows:

12. A contents providing method for providing stream contents to a
client terminal using a request from the client terminal, comprising:
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forming a plurality of data streams by dividing one data content
into a plurality of data streams, at a server, based on time increments,
each data stream being separately requestable by the client;
monitoring the playback of at least one data stream during
playback for a condition at a predetermined part of the data stream
specified by both a time information and data stream ID provided
from a server, the time information representing a time segment
within the data stream being monitored;
notifying the server if a playback condition for the at least one
of the data streams occurs; and
responding to said notifying of the playback condition by
making a following data stream available for playback;
wherein the condition in the monitoring step is the rate of
playback during the playback of the time segment within the data
stream being monitored.

The Examiner’s Rejections

The Examiner’s Answer cites the following prior art references:

Harrington US 2002/0156909 A1 Oct. 24, 2002

Logan US 2003/0093790 A1 May 15, 2003

Claims 12, 13, 21, 22, and 24-27 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Logan.
Claims 14 and 16-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Logan in view of Harrington.
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ISSUES
The pivotal issues before us are whether Appellant has demonstrated
that the Examiner erred in determining that
a) Logan’s disclosure of detecting a user’s attempt to skip over a
portion, such as an advertisement, of a data stream corresponds to the
claimed feature of monitoring the rate of playback, and
b) the portion of the data stream in Logan during which a skip
condition is detected is a predetermined part of a data stream specified by a
time information and data stream identification (ID) information as claimed.

FINDINGS OF FACT
The record supports the following relevant findings of fact (FF) by a
preponderance of the evidence:
1. Appellant’s invention relates to the viewing of data content
streams in which the rate of playback of important information in the data
content streams is monitored. (Spec. 6:1-14).
2. Appellant’s Specification discloses (10:11-25, 12:1-5, and
15:24-29) that access to data content which follows the important
information is authorized if playback of the important information is carried
out at normal playback speed, but is not authorized if playback is carried out
with a fast-forward or skip operation.
3. Logan discloses (¶¶ [0080], [0089], and [0100]) a video
program recording, editing, and playback system in which program
information is separated into segments with starting and ending times and
segment identification information.
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4. Logan further discloses (¶ [0317]) an example program playlist
including advertising program segments (Commercial 1 and Commercial 2)
having starting and ending time information as well as segment ID
information (“Slug”).
5. Logan also discloses (¶¶ [0289] and [0290]) that a user’s
attempt to skip an advertisement included within a program segment will
prevent the user from accessing the program segment immediately following
the advertisement.
6. Logan further discloses (¶¶ [0448] and [0449]) an embodiment
in which a user will be permitted to access an entire program segment only if
the user views the segment past a threshold portion of the segment.

PRINCIPLES OF LAW
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 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). “[T]he examiner bears the initial burden,
on review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Furthermore,
‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek
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out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
I. The rejection of claims 12, 13, 21, 22, and 24-27 based on
Logan.

With respect to the Examiner’s obviousness rejection of representative
independent claim 12 based on Logan, Appellant’s arguments in response
assert a failure by the Examiner to establish a prima facie case of
obviousness since all of the claimed limitations are not taught or suggested
by the applied Logan reference.1 Appellant’s arguments initially focus on
the contention that, in contrast to the claimed invention which requires the
monitoring of the playback rate of a data stream, Logan merely detects
whether a user is attempting to skip past an advertisement which is buried in
a data stream. According to Appellant (App. Br. 8-11; Reply Br. 4-7), the
skipping prevention taught by Logan is not playback as claimed since
skipping involves blindly moving forward to another media portion while
playback requires the media to be played while it is being monitored.

1 Appellant argues rejected claims 12, 13, 21, 22, and 24-27 together as a
group, making particular reference only to independent claim 12. See App.
Br. 7-11. Accordingly, we select claim 12 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).

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We do not find Appellant’s arguments to be persuasive of any error in
the Examiner’s stated position. We find no error in the Examiner’s line of
reasoning (Ans. 5 and 8) which finds that Logan monitors at least two
playback rates, a normal rate and a skip rate, the skip rate being faster than
the normal rate. We also find that the Examiners’ interpretation of Logan’s
skip mode as being a playback rate is actually supported by the description
in Appellant’s own Specification. For example, in several instances,
Appellant’s Specification (FF 2) draws a contrast between a standard
playback rate and faster playback rates such as fast-forward or skip.
We further find to be unpersuasive, Appellant’s argument (Reply Br.
8-11) that the Examiner has ignored the context within which Appellant’s
claimed monitoring step appears, i.e., that the monitoring must be at a
“predetermined part of the data stream specified by both a time information
and data stream ID.” We find, however, Appellant’s arguments to the
contrary notwithstanding, that ample evidence exists within the disclosure of
Logan (FF 3) to support the conclusion that programming information in
Logan is separated into segments with starting and ending times along with
segment identification information. Even further, Logan provides an
example program playlist (FF 4) which indicates that advertising program
segments (Commercial 1 and Commercial 2), for which Logan would
monitor attempts by a user to skip, have starting and ending time
information as well as segment ID information (“Slug”).
For the above reasons, since it is our opinion that the Examiner has
established a prima facie case of obviousness based on the teachings of
Logan which has not been overcome by any convincing arguments from
Appellant, the Examiner’s 35 U.S.C. § 103(a) rejection of representative
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independent claim 12, as well as claims 13, 21, 22, and 24-27 not separately
argued by Appellant, is sustained.

II. The rejection of claims 14 and 16-20 based on the combination
of Logan and Harrington.

This rejection is sustained as well. We find no error in the Examiner’s
application of the server authorization teachings of Harrington to the
program segment reproducing system of Logan. Appellant’s arguments
(App. Br. 12-14; Reply Br. 11-12) rely on those made with respect to
representative independent claim 12, which arguments we found to be
unpersuasive as discussed supra.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting appealed
claims 12-14, 16-22, and 24-27 for obviousness under 35 U.S.C. § 103.

DECISION
The Examiner’s 35 U.S.C. § 103 rejection of claims 12-14, 16-22, and
24-27, all of the appealed claims, 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)(1)(iv).

AFFIRMED

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