Obviousness

Obviousness Analysis under 35 U.S.C. § 103 for U.S. Patent No. 7,793,332

The analysis of obviousness under 35 U.S.C. § 103 requires determining whether the differences between the claimed invention and the prior art would have been obvious to a "person having ordinary skill in the art" (PHOSITA) at the time the invention was made. A PHOSITA is a hypothetical person possessing the normal skills and knowledge in the relevant technical field, not a genius, and is presumed to have known all relevant prior art. The Supreme Court case KSR International Co. v. Teleflex Inc. emphasized that obviousness rejections cannot be sustained by mere conclusory statements and require articulated reasoning with a rational underpinning. The analysis also considers factors such as the scope and content of the prior art, differences between the prior art and the claimed invention, and the level of ordinary skill in the art. Secondary considerations like commercial success or long-felt needs can also be considered to rebut an obviousness argument.

The '332 patent, as a continuation-in-part of U.S. Patent No. 4,694,490, builds upon concepts of embedding control signals in broadcast transmissions for remote control of subscriber station apparatus. The key independent claims of the '332 patent introduce elements related to personalization, processing of user-specific databases, and combining generated information with broadcast content.

Here are potential combinations of prior art references that could render certain claims of US 7,793,332 obvious, along with a motivation for a PHOSITA to combine them:

Combination 1: U.S. Patent No. 4,694,490 in view of U.S. Patent No. 4,337,480 and general knowledge of computing

• Claims affected: Claim 13 (Method for controlling a television receiver) and Claim 26 (Method for controlling a local device using a broadcast signal).
• Reasoning for Obviousness:
  • US 4,694,490 (Harvey et al.): This patent, a parent to the '332 patent, explicitly teaches the core concept of transmitting broadcast signals with embedded, encrypted codes to control functions at a subscriber station. This includes enabling or disabling reception and recording programs. It is a foundational reference for broadcast-based remote control of user equipment.
  • US 4,337,480 (Bourassin et al.): This patent describes an apparatus for interconnecting a television receiver with a plurality of video peripheral units (e.g., VCRs, video game consoles, teletext decoders) and allowing a user to select which peripheral's output is displayed. It also mentions superimposing images. While Bourassin's control is local and user-initiated, it demonstrates the known desire and capability to interface multiple peripherals with a television and to manage their output.
  • Motivation to Combine: A PHOSITA, seeking to enhance the utility and automation of the remote control system taught by Harvey et al. ('490), would be motivated to combine its broadcast-embedded control signals with the peripheral control capabilities of Bourassin et al. ('480). The '490 patent focuses on what can be controlled remotely via broadcast, and Bourassin ('480) focuses on how different peripherals can be interconnected and their outputs managed. It would be obvious to a PHOSITA to use the remote, embedded control signals of Harvey et al. to automatically actuate and control the switching and operation of the various peripheral units described in Bourassin et al., rather than relying solely on manual user input. For example, if Harvey et al. teaches a signal to record a program, and Bourassin et al. teaches connecting a VCR to a TV, it would be obvious to use the Harvey et al. signal to automatically activate the VCR disclosed in Bourassin et al. to record the broadcast.

Combination 2: U.S. Patent No. 4,694,490 in view of U.S. Patent No. 4,025,851 (Haselwood et al.) or U.S. Patent No. 4,547,804 (Greenberg)

• Claims affected: Claim 20 (Method for delivering a personalized message as part of a broadcast).
• Reasoning for Obviousness:
  • US 4,694,490 (Harvey et al.): This patent already teaches transmitting a program with embedded, encrypted information that, upon decryption, can control the display of messages or other functions at a subscriber station.
  • US 4,025,851 (Haselwood et al.) or US 4,547,804 (Greenberg): Both Haselwood ('851) and Greenberg ('804) teach embedding identification codes or signals into television signals for monitoring and verification purposes. While their purpose is monitoring, they demonstrate the technical feasibility and common practice of inserting digital data into a broadcast stream, specifically within the video portion or vertical blanking interval, and then detecting and decoding this information at a receiver.
  • Motivation to Combine: A PHOSITA, aware of Harvey et al.'s ('490) system for transmitting encrypted control information and the methods of embedding and detecting data in broadcast signals as taught by Haselwood ('851) or Greenberg ('804), would find it obvious to apply these embedding and detection techniques to the encrypted message information of Harvey et al. The goal would be to reliably deliver the encrypted control signals (which could include messages) in a robust manner. The '490 patent already covers the concept of displaying messages based on decrypted information. The combination would simply apply known techniques for embedding and extracting data from broadcast signals to the already-disclosed encrypted control message system, thereby achieving the delivery of a personalized message (controlled by the encrypted data) as part of a broadcast.

Combination 3: U.S. Patent No. 4,694,490 in view of U.S. Patent No. 4,381,522 (Lambert) and general computing knowledge related to databases

• Claims affected: Claim 1 (Method for creating a personalized information presentation for a user) and Claim 37 (Method for creating a combined, personalized media presentation).
• Reasoning for Obviousness:
  • US 4,694,490 (Harvey et al.): This patent establishes the concept of broadcast-embedded control signals that can operate local subscriber station apparatus. While it doesn't explicitly mention user-specific databases or combining newly generated user information with broadcast content, it lays the groundwork for remote control and information processing at the subscriber's end.
  • US 4,381,522 (Lambert): This patent describes a system where viewers influence program scheduling by providing input to a central computer. While the personalization is at the scheduling level, it introduces the concept of user input affecting content delivery. More importantly, the system is designed to respond to individual viewer preferences. Although the processing is centralized, it highlights the desire for tailoring content based on user interaction.
  • Motivation to Combine: A PHOSITA, faced with the desire to further personalize the content delivered by the remote control system of Harvey et al. ('490) and aware of the concept of user-influenced programming (Lambert, '522), would be motivated to integrate user-specific data processing at the subscriber station. Given the common knowledge in computing at the time (the filing date of the '332 patent is 1995), it would be obvious to store user-specific information in a local database (e.g., on a computer's disk drive as described in '332, FIG. 1, element 205) and use the broadcast-embedded instructions (from '490) to trigger local processing of this data. The output of this local processing could then be combined with the incoming broadcast stream, especially if the broadcast stream itself provided a "placeholder" or timing cue for such personalized content (as suggested by the "GRAPHICS ON/OFF" commands in the '332 patent's example). The motivation stems from a desire to move personalization from a centralized, pre-scheduling function (Lambert) to a real-time, user-side content generation and overlay function, leveraging the remote control capabilities of Harvey et al. and the readily available local computing power and storage. The example in '332, using a subscriber's stock portfolio, illustrates a clear and obvious application of combining remotely triggered local data processing with a broadcast for personalized financial reporting, a well-known desire.

Limitations and Secondary Considerations

It's important to acknowledge that the '332 patent's claims, particularly 1 and 37, emphasize the generation of new, user-specific information from a local database and its combination with the broadcast. While the combinations above suggest a path to obviousness for many aspects, the specific degree of "new" information generation and the seamless overlay might represent an inventive step. However, given the capabilities of microcomputers and graphics cards even by the filing date of the '332 patent (1995), a PHOSITA would possess the skills to develop programs for processing local data and generating graphics for overlay.

Furthermore, the '332 patent highlights advantages such as ease of use, transparency to the user, and privacy. While these are beneficial, they would need to be considered as secondary considerations to rebut a prima facie case of obviousness. For instance, if there was evidence of a long-felt but unsolved need for such a personalized, private, and easy-to-use system, or unexpected results from the combination, it could weigh against a finding of obviousness.

The analysis hinges on the specific details of the "processing of said user-specific information to generate user-specific information" and "combining said user-specific information with said programming" recited in claims 1 and 37, and how a PHOSITA would interpret the scope of these terms in light of the cited prior art and general technical knowledge at the time of invention.