BPAI says magazine article "The Future of TV" is an enabling reference

Takeaway: The Examiner used a magazine article "The Future of TV" as a secondary reference in an obviousness rejection. The Applicant argued that the reference was not enabling, and pointed to statements in the reference explicitly stating that not all of the described features existed at the time of publication. The Board reversed the obviousness rejection after finding that the combination did not teach all the elements, but also found that the reference was enabling because "Future TV explicitly states that the technology it describes was already in the possession of those of ordinary skill." (Ex parte Karaoguz, BPAI 2011.)

Details:
Ex parte Karaoguz
Appeal 2010004430; Appl. No. 10/667,036; Tech. Center 3600
May 9, 2011

The claims on appeal were directed to delivering media content.

The Examiner rejected all claims as obvious over a patent publication (Schein) and a magazine article ("The Future of TV"). The Examiner took the position that Schein taught every claim element except one, then relied on The Future of TV for the element "customizing content or wherein the at least one user defined media channel is pushed from the first home to other authorized users at locations that are separate and distinct from first home."

The Applicant appealed the rejection. In the Brief, the Applicant first argued that the combination did not teach creating user defined media channels which were pushed from one home to another. The Applicant also argued that "The Future of TV" was not an enabling reference, as it described a potential system rather than a system in existence at the time the article published.

To support this argument, the Applicant pointed to explicit statements in the article that "the future of television is just around the corner," "the pieces just have to be improved and linked together in the right way," and "connecting the chain will be no small feat" – admissions that the features did not exist at the time of publication. Moreover, the Applicant noted, the article specifically points out the deficiencies in existing systems:

What's missing is a commercial platform - a box in your home containing electronics and software that will let you receive the digital entertainment, interact with it and display it on any screen. Your TV, even a digital one, isn't powerful enough, and neither are the set-top converter boxes that receive signals from cable or satellite providers. ... We still won't have custom TV until companies find the best model for integrating digital content, distribution and the platform.

The Examiner's Answer contained this response to the Applicant's arguments:

Future TV teaches a detailed plan to customize television and push user defined channels. Future TV further states that this is the direction that television is moving since 1999 and discusses the ways in which companies may go about customizing access. The Appellant further argues that Future TV is forward looking and does not describe the technology as it existed at the time the article was written. In response, the Appellant's assertion is a conclusion, and there is no support on record to the contrary.

In a Reply Brief, the Applicant explained that rather than being conclusory, the assertion was explicitly supported by the reference itself. In contrast, "[t]he Examiner's Answer provides absolutely no evidence that the public was in possession of the 'future' technology discussed in The Future of TV at the time that reference was published."

The Board reversed the rejection, based on the finding that neither reference taught the feature of pushing a user created channel. "As the Appellants argue, Schein generally creates a channel selection database for controlling the selection of existing channels rather than creating and pushing a new channel."

The Board also commented about Applicant's argument about the lack of enablement in "The Future of TV." The Board said the argument was not persuasive because "Future TV explicitly states that the technology it describes was already in the possession of those of ordinary skill." This in turn was based on an underlying finding of fact made by the Board: "The technology to implement Future TV existed at the time of publication, and so was known to those of ordinary skill. Future TV 35."

My two cents: The Board completely mischaracterized the teachings of The Future of TV, and Finding of Fact #6 about Future TV is way off base! What the reference actually says about "existing technology" is this:

Much of the broadcast, reception and display technology needed to let you see whatever show you want, whenever you want, on whatever screen you want, exists. The pieces just have to be improved and linked together in the right way. Connecting the chain will be no small feat. ... What's missing is a commercial platform - a box in your home containing electronics and software that will let you receive the digital entertainment, interact with it and display it on any screen. Your TV, even a digital one, isn't powerful enough, and neither are the set-top converter boxes that receive signals from cable or satellite providers.

Because the article says that some of the technology exists, that means some of it doesn't. And I read the statement that "the pieces need to be improved" to really mean that the system won't work until the pieces are modified.

Given the above, how can you possibly say that "the technology to implement Future TV existed at the time of publication, and so was known to those of ordinary skill" ? Now, I'll admit that it's possible that a POSITA, at the time of invention, could have taken these few general statements which vaguely refer to existing features and modify them to produce the claimed feature. That is, it's possible the claimed feature was obvious in view of these teachings. But no such evidence was introduced! So there's no way the Board had enough evidence in the record to reach the conclusion that the reference enabled the claimed feature.

This is the most egregiously unsupported finding of fact that I've seen in a while.