Monday, November 28, 2011

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.

10 comments:

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

    Karen -- it may be an extremely egrigious example, but you don't have to look too hard to find many other examples.

    Unfortunately, there just isn't any real meaningful review of BPAI decisions. A Request for Rehearing is a joke of a process -- extremely review Requests for Rehearing are successful because the APJ isn't going to back down on a previously position. The other mechanism for review (i.e., the Federal Circuit) is so expensive that few applicants ever take advantage of it. As such, the BPAI usually operates unchecked in any manner.

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  2. This sort of action by the Board is depressingly common - I hope the applicant can afford to take this up to CAFC.

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  3. "Because the article says that some of the technology exists, that means some of it doesn't. "

    Correct, and that's why the article goes on to tell you what doesn't exist. Specifically, a COMMERCIAL PLATFORM. In other words, this sht works in the lab, as it is simple to get it to work in the lab. As it goes on to explain our everyday piece of consumer electronics isn't capable of doing the processing that the boys in the lab can do.

    "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"

    That is because you're a tard. Pieces being improved is nothing more than making them user friendly on oh, I don't know, exactly what they tell you it needs improving on A COMMERCIAL PLATFORM.

    "Given the above"

    We aren't given the above. We're given what the article says. Perhaps you'll try reading the actual article at some point. And all this is not to even mention that we're also given the skill of the ordinary artisan at the date of the publication.

    In any event, you guis need to L2factfind.

    Also, you guys should read whatever else is in the prosecution history. I find it quite hilarous.

    The beautiful thing about enablement arguments is that when and if you get the applicant to actually say why x wasn't enabled as of the time of the reference, as opposed to why they think some given piece of art is not enabled/enabling, then it is easy to go through a wands factors on the claim itself. It's rare, but it happens on occasion.

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  4. If you are of the view that a Request for Rehearing is an exercise in futility, it is still probably best to file one in order to preserve your arguments regarding the BPAI's mistakes as part of the prosecution history.
    Since the BPAI reversed the obviousness rejection, the applicant may not care that the BPAI found the reference to be enabling. Is it a risk to file a Request for Rehearing? Possibly if the BPAI uses it to buttress their reasoning regarding enablement or uses it as an opportunity to throw in a new ground of rejection. To me, the BPAI is far too overburdened/lazy to go to that extreme and it's worth the risk to keep prosecution history estoppel on your side.

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  5. >Since the BPAI reversed the obviousness
    >rejection, the applicant may not care that
    >the BPAI found the reference to be enabling

    The Applicant here did file a Request for Rehearing, but for a different set of claims (system claim 40) for which the Board affirmed the obviousness rejection.

    The Board didn't really need to reach the non-enablement issue to decide on the system claim, but in the rehearing decision the Board did repeat its earlier statement that "Future TV explicitly states that the technology it describes was already in the possession of those of ordinary skill."

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  6. "Correct, and that's why the article goes on to tell you what doesn't exist. Specifically, a COMMERCIAL PLATFORM. In other words, this sht works in the lab, as it is simple to get it to work in the lab. As it goes on to explain our everyday piece of consumer electronics isn't capable of doing the processing that the boys in the lab can do."

    6 ... the classic example of an Examiner. Reads into references teachings that are not there.

    "this sht works in the lab, as it is simple to get it to work in the lab."
    Sorry ... nothing close to that being disclosed. If that "sht" worked in the lab, then getting a commerical implementation would be easy.

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  7. "6 ... the classic example of an Examiner. Reads into references teachings that are not there."

    In other words, you're bad at reading comp?

    "Sorry ... nothing close to that being disclosed. If that "sht" worked in the lab, then getting a commerical implementation would be easy. "

    Didn't say all that was disclosed. I provided you a translation of what was disclosed from technical fluff piece to you native tongue of Dumass so that you might understand it better.

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  8. The problem with the process is that there is no immediate blowback to an Examiner for reversals. Certainly, it would behoove a SPE to take a look at all outstanding appeals from a recently reversed Examiner to determine if similar defects existed in the Examiner's reasoning in those appeals. I have an outstanding appeal from an Examiner who has been reversed in 8 out of 10 appeals from this Examiner the BPAI decided within the two years. Even with 80% reversal, my client's appeal waits at least another year for a decision due to the BPAI's backlog.

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  9. These APJ's need to be fired. Immediately.

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  10. "The problem with the process is that there is no immediate blowback to an Examiner for reversals."

    There is no blowback at all, immediate or otherwise.

    There doesn't appear to be any blowback for APJ's either. A 26,000+ case backlog and these idiots are spending time addressing an issue (enablement of one of the references) that is completely unnecessary to the resolution of the case? And on top of that, getting it wrong?

    WTF?

    Maybe Mr. Kappos and/or Mr. Smith should get these 3 idiot APJ's in a room and ask them what they were thinking. And then give them a good hard smack upside the head.

    Mr. Kappos, Mr. Smith, are you even paying attention?

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