Ex Parte Wong et al

Board of Patent Appeals and Interferences

Apr 19, 2007

09650481 (B.P.A.I. Apr. 19, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte CURTIS WONG AND STEVEN DRUCKER
___________

Appeal 2007-0985
Application 09/650,481
Technology Center 2600
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Decided: April 19, 2007
___________

Before JAMES D. THOMAS, JOSEPH F. RUGGIERO, and JOSEPH
L. DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's
Final Rejection of claims 1-26.
We AFFIRM.

BACKGROUND
Appellants’ invention relates to a system and method for identifying
audio/visual programs to be recorded. An understanding of the invention
can be derived from a reading of exemplary claim 1, which is reproduced
below.
1. A system for representing at least one of an audio and visual program,
comprising:

a token having a schema that identifies a corresponding program so
that a recording system receiving the token is programmable to record
the program based on the token, the token being transportable
between at least two computers.

PRIOR ART
The prior art reference of record relied upon by the Examiner in
rejecting the appealed claims is:
Hirata US 6,374,416 B2 Apr. 16, 2002
(filed Mar. 16, 1998)

REJECTIONS
Claims 1-4, 7-9, 13, 16, 18-19, 20-23, and 25-26 stand rejected under 35
U.S.C. 102(e) as being anticipated by Hirata.

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Claims 5-6, 10-12, 14-15, 17, and 24 stand rejected under 35 U.S.C.

103(a) as being unpatentable over Hirata.

Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellants regarding the above-noted rejection, we make
reference to the Examiner's Answer (mailed Jan. 27, 2005) for the reasoning
in support of the rejections, and to Appellants’ Brief (filed Oct. 1, 2004) and
Reply Brief (filed Mar. 8, 2005) for the arguments thereagainst.

OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellants’ Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellants and the
Examiner. As a consequence of our review, we make the determinations
that follow.

35 U.S.C. § 102
Appellants contend Hirata does not disclose the limitation a “token
having a schema” (Br. 5). Appellants contend that the claimed schema is a
data structure and that:
token schema is defined in the subject application as a data structure
that contains a plurality of fields for holding different types of data. (See
e.g., Application at p. 30, lines 27-30). The different types of data may
include, for example, a global unique identifier ("GUID"), a program
GUID, billing information, program characteristics, program
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descriptions, images, video clips, authentication elements, passwords,
encryption elements, personal video recorder ("PVR") GUID, and
account information. (See Application at pp. 31-33). Thus, the token
schema with a plurality of fields for holding different types of data
provides for a variety of functionality such as encryption, password
protection, tracking, automated billing, and can even provide video clips
to allow a user to preview the selected program (Br. 5-6).

We have included a lengthy portion of the Specification to show and put
into context the asserted proposed definition of the “token having a schema”
as recited in independent claim 1.
Fig. 8 illustrates an example of a token schema 450 that may be
utilized in accordance with an aspect of the present invention. The token
schema 450 may be a multi-level data structure that contains a plurality
of fields for holding different types of data. Each field also may contain
actual data, such as in the form of raw data, an object, a component, a
module, etc., or a link to the data associated with the link. By way of
example, the schema 450 includes a header 452 that identifies a group of
data as a token as well as may define attributes of the token schema
and/or the different levels of data.

The token schema 450 may include a globally unique identifier for a
token (a "token GUID") 454, which uniquely identifies a respective
token obtained from a server 20 (Fig. 1B). A service provider, for
example, may employ the token GUID 454, to track a token as it is
transmitted from one computer to another as well as to provide a link
between a specific token and billing information, such as in situations
when a token corresponds to a program that has been purchased or
rented from a service provider.

The token schema 450 also includes program criteria 456 for
identifying different characteristics of the audio and/or visual program
represented by a token. One aspect of the program criteria 456 may be a
global unique identifier (GUID) 458 identifying a specific program
(hereinafter referred to as a "program GUID"). The program GUID 458,
for example, may be a unique program identification number (or series
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of numbers and other characters) that represents a specific program, such
as may be established by a service provider. A program GUID 458 may
further include other data that may be employed to uniquely identify a
program, either globally or in a local tuning space. The program GUID
individually may identify a program with sufficient particularity so that a
recording system may be programmed to record the program represented
by the token.

The program criteria 456 further may include one or more other
program characteristics 460 that may be employed to help identify a
program. As illustrated in the example of Fig. 8, the program
characteristics 460 may include data identifying different aspects of a
program, such as, for example: title, keywords, rating, director,
producer(s), actors and/or actresses, host(s), format, category, channel or
broadcast network, genre, broadcast date, broadcast time (if known),
program duration, a URL link to information (e.g., other program
characteristics, a program GUID, local tuning space information, etc.)
about the program, and/or any other aspect of a program that could be
used to help identify a particular program. (Specification, p 30, l. 27– p.
31, l. 29)

We note that the Specification is replete with alternatives and examples
without any set definitive embodiments. While this may allow Appellants a
wide range of equivalents later in the life of the patent, we find it does not
allow for a definitive definition of claim terminology. Rather, we find the
express language relied upon by Appellants from the Specification is
couched with exemplary language “Fig. 8 illustrates an example of a token
schema 450 that may be utilized in accordance with an aspect of the present
invention. The token schema 450 may be a multi-level data structure that
contains a plurality of fields for holding different types of data.” We find
that the expansive nature of the asserted definition is such that we find the
term to be undefined by the Specification. In evaluating the described
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invention, we find it difficult to discern what is within the metes and bounds
of the claim language and what is excluded from or non-equivalent to the
claimed limitation.
Moreover, we note that the language of independent claim 1 and
independent claim 8 additionally is drafted in the ability to perform a
function “transportable” and “adapted to be transmitted.” We find that the
ability to perform a function is broader that the actual performance of these
functions.
With respect to independent claim 1, Appellants contend that Hirata does
not teach a token having a schema or data structure that contains a plurality
of fields for holding different types of data which provide a variety of
functionality (Br. 5-6). Appellants argue that Hirata teaches an email that
contains one type of data (a control command) and that performs only one
type of function (programming a device) (Br. 6). Appellants contend that
the tokens having a schema of the subject claims are distinguishable from
the emails of Hirata in terms of the data structure, variety of data content,
and degree of functionality (Br. 6). We disagree with Appellants and find
that Appellants’ contentions are not commensurate in scope with the express
language of independent claim 1. Furthermore, we find it unreasonable to
interpret the claim language of independent claim 1 as advanced by
Appellants due to the exemplary nature of the Specification, as discussed
above. Therefore, Appellants' argument is not persuasive.
Appellants contend that the Examiner addressed the functional aspects
of the token having a schema, but not the structural aspects. Appellants
contend that the schema is a structural limitation and that the data structure
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with a plurality of fields is structurally different than the email of Hirata.
We cannot agree with Appellants’ contention since we find no express or
implied structure for the data recited in the language of independent claim 1.
Therefore, Appellants' argument is not persuasive.
Appellants argue that the data of Hirata is a character string not a schema
(Br. 7). We disagree and find that the email of Hirata has some structure to
the data and would have been a data structure or schema in view of the
generalized interpretation that we have found in Appellants’ Specification.
Therefore, Appellants' argument is not persuasive.
Appellants argue that the Examiner has taken the position that the email
of Hirata is a data structure identical to the token having a schema (Reply
Br. 2). We find no support for Appellants’ characterization of the
Examiner’s position. The Examiner merely identified that there is not
support in the language of independent claim 1 for Appellants’ contention
and found that the teachings of Hirata are a functional equivalent to the
recited token with a schema (Answer 8). We agree with the Examiner and
cannot agree with Appellants’ interpretation of the Examiner’s arguments.
Additionally, Appellants argue that under claim differentiation, the token
having a schema cannot be an email (Reply Br. 2). We cannot agree with
Appellants since we do not find support in the language of independent
claim for this argument. Furthermore, while this argument to these
dependent claims may be persuasive as to the dependent claims, Appellants
have not separately argued these claims. Therefore, Appellants' argument is
not persuasive, and we will sustain the rejection of independent claim 1 and
those claims grouped therewith.
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We recognize that the Examiner’s rejection of the independent claims
may have been better and easier formulated as a rejection under 35 U.S.C.
§ 103(a), but we agree that the rejection under 35 U.S.C. § 102 is
appropriate and proper.

35 U.S.C. § 103
With respect to dependent claim 5, Appellants rely upon the arguments
set forth with respect to independent claim 1 which we did not find
persuasive. Similarly, we do not find the same arguments persuasive under
35 U.S.C. § 103(a). Therefore, Appellants' argument is not persuasive, and
we will sustain the rejection of claim 5 and the claims grouped therewith.

CONCLUSION
To summarize, we have sustained the rejections of claims 1-26 under 35
U.S.C. §§ 102 and 103.

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

KIS

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