Nathan Leslie. Sandland

Patent Trials and Appeals Board

Nov 20, 2019

13623043 - (D) (P.T.A.B. Nov. 20, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/623,043 09/19/2012 Nathan Leslie Sandland 060963-5712-US 9101
82750 7590 11/20/2019
Morgan, Lewis & Bockius LLP (PA)(Google)
1400 Page Mill Road
Palo Alto, CA 94304-1124
EXAMINER
TRINH, TUNG THANH
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
11/20/2019 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):
padocketingdepartment@morganlewis.com
vskliba@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NATHAN LESLIE SANDLAND
____________

Appeal 2018-009115
Application 13/623,043
Technology Center 2400
____________

BEFORE JOHN A. JEFFERY, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.

BELISLE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–4, 6, and 9–23. App. Br. 11. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies the
real party in interest as Google LLC. App. Br. 3.
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STATEMENT OF THE CASE
The Claimed Invention
Appellant’s invention generally relates to “systems, methods and
devices configured to collect information about a television program playing
on a display.” Spec. ¶ 1. More specifically, Appellant’s invention
“determine[s] what a particular consumer is watching on television in order
to deliver matched functionality, content and/or services, as a part of an
interactive television suite of technologies.” Spec. ¶ 15. According to the
Specification, an exemplary embodiment includes:
capturing display data from the media program as it is being
presented; evaluating the display data to determine whether or
not the display data includes a text overlay including information
about the media program; and extracting text from the overlay in
response to determining that the display data includes the text
overlay, wherein the extracted text is associated with the media
program.
Spec. ¶ 5.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method of identifying a media program, comprising:
at a first electronic device coupled to a display device
displaying the media program, the first electronic device
including a processor and memory:
without issuing a command to the display:
capturing an image of display data from the
media program;
evaluating the image to determine whether or
not the display data includes a portion with a text
overlay with information about the media program,
including evaluating one or more of:
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a color of the portion;
a percentage of the image covered by
the portion;
an arrangement of text within the
portion; and
a contrast between the portion and the
media program;
in accordance with a determination that the
display data does not include the text overlay,
initiating a delay period;
at the end of the delay period and without
being prompted by user interaction, repeating the
capturing and the evaluating;
in accordance with a determination that the
display data does include the text overlay,
extracting text from the text overlay; and
obtaining the identity of the media program based
on the extracted text.
App. Br. 18 (Claims Appendix).

The Applied References
The Examiner relies on the following references as evidence of
unpatentability of the claims on appeal:
Candelore US 2008/0244637 A1 Oct. 2, 2008
King US 2011/0025842 A1 Feb. 3, 2011

The Examiner’s Rejections
The Examiner made the following rejections of the claims on appeal:
Claims 1–4, 6, and 9–23 stand rejected under pre-AIA 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Final Act. 3–4.
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Claims 1–4, 6, and 9–23 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Candelore and King. Final Act. 4–9.

ANALYSIS2
Section 112 Rejection
Appellant disputes the Examiner’s finding that the Specification does
not provide written description support for the limitation “without issuing a
command to the display,” as recited in independent claim 1. App. Br. 13–
14; Reply Br. 5; Final Act. 3–4. Appellant argues that the Specification
provides support for this limitation at least at Figure 3 and paragraph 37,
because it discloses, inter alia, “identifying instances during which the
primary set-top box provides the overlay by monitoring the display output
provided by the primary set-top box, and parsing the overlay for the desired
information,” as well as “detecting when channel identifiers are displayed
without being prompted by user interaction (i.e., a user pressing a button).”
App. Br. 13 (citing Spec. ¶ 37, Fig. 3) (emphasis altered). Appellant argues
that the foregoing disclosure is to be distinguished from other methods
disclosed in the Specification that do include issuing a command to the
display, like “transmitting a first infrared (IR) code (or the like) to the
primary set-top box in order to initiate the display of the program
information overlay.” App. Br. 13–14 (citing Spec. ¶ 40, Fig. 4) (emphasis
altered). We find Appellant’s argument persuasive.

2 Throughout this Decision, we have considered Appellant’s Appeal Brief
filed April 26, 2018 (“App. Br.”); Appellant’s Reply Brief filed September
25, 2018 (“Reply Br.”); the Examiner’s Answer mailed August 16, 2018
(“Ans.”); the Final Office Action mailed September 25, 2017 (“Final Act.”);
and Appellant’s Specification filed September 19, 2012 (“Spec.”).
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To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically, the
description must “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed” and
the test requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in
the art. Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the
inventor actually invented the invention claimed.
Ariad Pharms., Inc., 598 F.3d at 1351 (internal quotations and citations
omitted). Additionally, the Examiner has the initial burden of presenting
evidence or reasons why persons skilled in the art would not recognize in an
applicant’s disclosure a description of the invention defined by the claims.
In re Wertheim, 541 F.2d 257, 265 (CCPA 1976).
Here, the Examiner finds “the specification does not describe ‘without
issuing a command to the display’ in combination with ‘text overlay’ and
‘delay time’.” Ans. 4; Final Act. 4. The Examiner bases this finding on an
observation that a command to the display must occur to cause the display to
show certain information or the text overlay, as it does not appear by default.
See Ans. 5 (“[T]he information or the text overlay does not display[] in the
media program presentation by default, a user can set preferences or actively
send a command to display the text overlay.”). But Appellant argues “[t]he
Examiner appears to be conflating ‘a user issuing a command’ with ‘the first
electronic device issuing a command.’” Reply Br. 5. We agree.
Claim 1 requires, inter alia, that a first electronic device coupled to a
display device capture an image of display data from a media program and
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determine whether the display data includes a text overlay “without issuing a
command to the display,” not that the display data and text overlay appear
without a user issuing a command to the display. As discussed above, the
Specification discloses a first electronic device “monitoring the display
output provided by the primary set-top box, and parsing the overlay for the
desired information,” as well as “detecting when channel identifiers are
displayed without being prompted by user interaction (i.e., a user pressing a
button).” App. Br. 13 (citing Spec. ¶ 37, Fig. 3) (emphasis omitted). Based
on the foregoing and our review of the Specification and Briefs, we find the
Examiner has not shown by a preponderance of the evidence that
Appellant’s Specification would not reasonably convey to skilled artisans
that Appellant possessed the claimed feature of “without issuing a command
to the display.” See Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1355 (Fed.
Cir. 2015) (noting that negative limitations are adequately supported when
the specification describes a reason to exclude the relevant limitation).
Accordingly, we do not sustain the Examiner’s rejection under
pre-AIA 35 U.S.C. § 112 of independent claim 1. For similar reasons, we do
not sustain the Examiner’s rejection under pre-AIA 35 U.S.C. § 112 of
independent claims 9 and 14, which each recite the same challenged
limitation. Additionally, we do not sustain the Examiner’s rejection under
pre-AIA 35 U.S.C. § 112 of claims 2–4, 6, 10–13, and 15–23, which depend
therefrom.
Section 103 Rejection
Appellant disputes the Examiner’s finding that the combination of
Candelore and King renders obvious claims 1–4, 6, and 9–23, including
independent claims 1, 9, and 14. See App. Br. 14–17; Reply Br. 6–7.
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Appellant argues the appealed claims as a group. See App. Br. 12 (“Claim 1
is representative.”). Thus, for purposes of our analysis, we select
independent claim 1 as the representative claim, and any claim not argued
separately will stand or fall with our analysis of the rejection of claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues, inter alia, the combination of Candelore and King
does not teach “evaluating [an] image to determine whether or not the
display data includes a portion with a text overlay with information about
the media program,” as recited in independent claim 1. Reply Br. 6
(emphasis altered); see App. Br. 14–15. We provide a brief review of these
references below.
Candelore is generally directed to “a method and apparatus for
obtaining metadata program information during [television] channel
changes.” Candelore, Abstract. Candelore’s method includes “the capture
of an on-screen display that is rendered by a rendering device such as, for
example, a digital television system,” where “[t]he on-screen display may be
generated by an access device such as a set-top box in response to a program
selection event.” Id. “Once captured, the on-screen display may be decoded
to determine metadata for a program selected by the program selection
event,” where the “decoding may be provided using pattern matching,
optical code recognition (OCR) or other like decoding technique.” Id.
King is generally directed to “[a] system and method for automatically
changing the operation of a mobile device in response to a presence of
information.” King, Abstract. King’s system “determines an information
capture device is proximate to text, automatically changes operation of the
capture device to a certain mode, captures the text, and performs an action
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associated with the captured text.” Id. King’s system is “‘text aware’ in that
at any time it can determine whether it is in the presence of text” (Id. ¶ 234),
and “[o]nce the system determines that text is present, the system may begin
the extraction process” (Id. ¶ 235).
The Examiner agrees with Appellant that Candelore alone “does not
teach nor suggest evaluating an image to determine whether or not the
display data includes a text overlay,” but finds King “could be utilized to
make such a determination” (Ans. 6):
Candelore teaches displaying an [on-screen display (OSD)] or
image overlay to be captured, King’s system . . . is able to capture
the OSD or image overlay in proximity to Candelore’s display
device, King’s system is able to process image overlay by
markup analysis. . . . Therefore, in combination, Candelore and
King disclose [evaluating an image to determine whether the
display data includes a text overlay].
Ans. 8. Appellant disagrees, and argues “King discloses looking for text,
any type of text, not a text overlay with information about the media
program.” Reply Br. 7; App. Br. 14–15. Appellant also argues “King would
not distinguish between text that is part of the media program itself
(e.g., a letter being displayed to the audience) and text that is part of a text
overlay with information about the media program.” Reply Br. 7. Appellant
further argues “a combination of the teachings of King and Candelore would
result in Candelore’s system attempting to extract text from a text overlay
each time King’s system detects any text whatsoever.” Reply Br. 7. We
find Appellant’s argument persuasive.
Claim 1 recites evaluating an image of display data from a media
program to determine whether the display data includes a portion with a text
overlay with information about the media program. That is, claim 1 requires
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determining that display data includes a text overlay.3 Although we agree
with the Examiner that Candelore discloses capturing an on-screen display
(Ans. 8), and that King discloses determining the presence of text and
extracting such text (id.), we find the Examiner has not sufficiently shown
that Candelore and King teach determining whether display data includes a
text overlay. More specifically, the Examiner does not provide sufficient
evidence or technical reasoning as to how King (or the combination of
Candelore and King) teaches distinguishing between text that is part of the
media program itself, and text that is part of a text overlay with information
about the media program, i.e., “determin[ing] whether or not the display data
includes a portion with a text overlay with information about the media
program” as recited in claim 1. Because we find this issue dispositive here,
we do not address Appellant’s other arguments.
Accordingly, constrained by the present record, we do not sustain the
Examiner’s rejection under pre-AIA 35 U.S.C. § 103(a) of independent
claim 1. For similar reasons, we do not sustain the Examiner’s rejection
under pre-AIA 35 U.S.C. § 103(a) of independent claims 9 and 14, which
recite commensurate limitations. Additionally, we do not sustain the

3 We note that independent method claim 1, for example, includes
conditional limitations to be performed depending on whether display data
includes a text overlay. As the prior art need only teach one or the other of
such yes-no conditional limitations, the Examiner should take this into
consideration in any further prosecution in this case, to the extent not already
done. See Ex parte Schulhauser, Appeal 2013-007847 (PTAB Apr. 28,
2016) (precedential) (noting that the broadest reasonable interpretation of a
method claim having contingent limitations requires only those steps that
must be performed and does not include steps that are not required to be
performed because the condition(s) precedent are not met).
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Examiner’s rejection under pre-AIA 35 U.S.C. § 103(a) of claims 2–4, 6,
10–13, and 15–23, which depend therefrom.

DECISION SUMMARY
Claims
Rejected 35 U.S.C. §
Reference(s)/
Basis Affirmed Reversed
1–4, 6, 9–23 112 Written
Description
1–4, 6,
9–23
1–4, 6, 9–23 103 Candelore, King 1–4, 6,
9–23
Overall
Outcome
1–4, 6,
9–23

REVERSED