Obviousness — US Patent 8646001

The obviousness of US patent 8646001 under 35 U.S.C. § 103 requires identifying a combination of prior art references that would have motivated a person having ordinary skill in the art (POSITA) to arrive at the claimed invention with a reasonable expectation of success. The patent itself describes several prior art systems and their limitations, which serve as explicit motivations for the advancements claimed in US8646001.

Let's analyze Claim 1 of US8646001, which describes an apparatus for a subscriber station:
"1. An apparatus for use at a subscriber station for receiving a multi-channel transmission that contains programming and that includes a plurality of signals that are embedded in said programming, said apparatus comprising:
a receiver configured to receive said multi-channel transmission;
a signal detector configured to detect said embedded signals and to output said detected embedded signals;
a processor configured to receive said detected embedded signals and to process at least some of said detected embedded signals;
a local storage medium configured to store data; and
a transmitter configured to transmit data from said local storage medium to a remote site;
wherein said detected embedded signals are used by said apparatus to perform one or more operations, including:
controlling a connection of external apparatus to said apparatus;
controlling an actuation of external apparatus that is connected to said apparatus;
tuning said receiver to a particular channel of said multi-channel transmission;
processing programming content of said multi-channel transmission in a manner determined by said embedded signals;
recording programming content of said multi-channel transmission to said local storage medium in a manner determined by said embedded signals;
decrypting programming content of said multi-channel transmission in a manner determined by said embedded signals;
or controlling retransmission of programming content from said local storage medium."

A strong combination of prior art references that would render Claim 1 obvious includes:

U.S. Pat. No. 4,025,851 to Haselwood et al. (or U.S. Pat. No. 3,845,391 to Crosby, or U.S. Pat. No. 4,547,804 to Greenberg): These references teach the concept of embedding digital signals within broadcast programming for monitoring and identification purposes. [cite: The full patent text, Definitions: "One system that monitors by means of embedded digital signals is described in U.S. patent to Haselwood, et al. U.S. Pat. No. 4,025,851.", "Another that monitors by means of audio codes that are only “substantially inaudible” is described in U.S. Pat. No. 3,845,391 to Crosby.", "a third that automatically monitors a plurality of channels by switching sequentially among them and that includes capacity to monitor audio and visual quality is described in U.S. Pat. No. 4,547,804 to Greenberg."] The patent itself highlights a limitation of this prior art: "television has only so much capacity for transmitting signals outside the visible image; it is inefficient for such signals to serve only one function." [cite: The full patent text, Definitions: "the commercial objective of the aforementioned monitoring systems of Crosby, Haselwood et. al., and Greenberg is to provide independent audits to advertisers and others who pay for programming transmissions. All require embedding signals in programming that are used only to identify programming. Greenberg, for example, requires that a digital signal be transmitted at a particular place on a select line of each frame of a television program. But television has only so much capacity for transmitting signals outside the visible image; it is inefficient for such signals to serve only one function; and broadcasters can foresee alternate potential for this capacity that may be more profitable to them."] This explicitly provides a motivation for a POSITA to use these embedded signals for multiple functions, including control.
Dataspeed Corporation/Equatorial Communications Company systems: These systems transmit real-time financial data to microcomputers equipped with receivers (modios) and decryptors, where subscribers can program their apparatus to select data of interest. [cite: The full patent text, Definitions: "the Dataspeed Corporation division of Lotus Development Corporation of Cambridge, Mass. transmits real-time financial data over radio frequencies to microcomputers equipped with devices called “modios” that combine the features of radio receivers, modems, and decryptors.", "the Equatorial Communications Company of Mountain View, Calif. transmits to similarly equipped receiver systems by satellite.", "Each subscriber programs his subscriber station apparatus to select particular data of interest."] These systems include local processors (microcomputers) and local storage (disk drives) and decryptors. The patent notes their limitation: "It only transmits data; it does not control data processing. No system is preprogrammed to simultaneously control a plurality of central processor units... None has any capacity to cause subscriber station computers to process received data, let alone in ways that are not inputted by the subscribers." [cite: The full patent text, Definitions: "This prior art is limited. It only transmits data; it does not control data processing. No system is preprogrammed to simultaneously control a plurality of central processor units, operating systems, and pluralities of computer peripheral units. None has capacity to cause simultaneous generation of user specific information at a plurality of receiver stations. None has any capacity to cause subscriber station computers to process received data, let alone in ways that are not inputted by the subscribers. None has any capacity to explain automatically why any given information might be of particular interest to any subscriber or why any subscriber might wish to select information that is not selected or how any subscriber might wish to change the way selected information is processed."] This highlights the motivation to enable broadcast-driven control over local processing.
U.S. Pat. No. 4,337,480 et al. to Bourassin: This patent describes a system for dynamically interconnecting a television receiver with multiple peripheral units and performing "image-within-image" superimposition. [cite: The full patent text, Definitions: "U.S. Pat. No. 4,337,480 et al. to Bourassin describes a dynamic interconnection system for connecting at least one television receiver to a plurality of television peripheral units.", "image-within-image the viewer can superimpose a secondary image from a second peripheral unit upon the primary image on the television display."] The patent notes a limitation: "It has no capacity for acting on instructions transmitted by broadcasters to interconnect, actuate or tune systems peripheral to a television receiver or to actuate a television receiver or automatically change channels received by a receiver." [cite: The full patent text, Definitions: "This prior art too, is limited. It has no capacity for interconnecting or operating a system at any time other than the time when the order to do so is entered manually at the system or remote keyboard. It has no capacity for acting on instructions transmitted by broadcasters to interconnect, actuate or tune systems peripheral to a television receiver or to actuate a television receiver or automatically change channels received by a receiver."]
Video tape recorders (VTRs) and "interactive video" systems: These systems provide capacity for delayed recording of television transmissions (manual input for VTRs) and locating/transmitting prerecorded programming and data from discs (interactive video). [cite: The full patent text, Definitions: "Video tape recorders have capacity for automatic delayed recording of television transmissions on the basis of instructions input manually by viewers.", "So-called “interactive video” systems have capacity for locating prerecorded television programming on a given disc and transmitting it to television receivers and locating prerecorded digital data on the same disc and transmitting them to computers."] The patent identifies a limitation: "It has no capacity for automatically embedding signals in and/or removing embedded signals from a television transmission then recording the transmission. It has no capacity for controlling the connection or actuation or tuning of external apparatus. It has no capacity for retransmitting prerecorded programming and controlling the decryption of said programming, let alone doing so on the basis of signals that are embedded in said programming that contain keys for the decryption of said programming." [cite: The full patent text, Definitions: "This prior art too, is limited. It has no capacity for automatically embedding signals in and/or removing embedded signals from a television transmission then recording the transmission. It has no capacity for controlling the connection or actuation or tuning of external apparatus. It has no capacity for retransmitting prerecorded programming and controlling the decryption of said programming, let alone doing so on the basis of signals that are embedded in said programming that contain keys for the decryption of said programming."]

Motivation to Combine:
A POSITA, aware of the desire to enhance the interactivity and personalization of broadcast media (a long-felt need indicated by the extensive limitations of prior art systems in this domain as described by the patent itself), would have been motivated to combine these known technologies.

The central motivation comes from the patent's own recognition that existing embedded signals (Haselwood et al.) are inefficient because they serve only one function (identification). A POSITA would readily recognize the benefit of expanding the function of these embedded signals to carry control instructions.

Specifically, a POSITA would combine:

The capability of Haselwood et al. (embedding digital signals in broadcasts) with the goal of making these signals carry more than just identification data; namely, control instructions.
The Dataspeed/Equatorial concept of transmitting data to local microcomputers for processing and selection, noting the limitation that processing is user-programmed. The motivation would be to use the newly multi-functional embedded signals to remotely control these local microcomputers to process data in broadcaster-determined ways, and even to generate user-specific information, thus overcoming Dataspeed/Equatorial's limitation.
Bourassin's teaching of dynamic peripheral interconnection and "image-within-image" overlay. The patent explicitly states that Bourassin lacks control by broadcaster-transmitted instructions. The motivation would be to use the embedded control signals (from Haselwood et al., now carrying control instructions) to automatically trigger the peripheral connections, actuations, and visual overlays described by Bourassin.
The recording and retransmission functions of VTRs and interactive video systems. The motivation would be to use the embedded control signals (from Haselwood et al.) to enable broadcast-controlled recording, playback, and retransmission, thereby automating manual processes and enabling more sophisticated content management, addressing the limitations of prior VTRs.
The existing decryptors and "addressable" systems (Dataspeed/Equatorial, general prior art) would provide the basis for the decryption element. The motivation would be to integrate the embedded control signals (Haselwood et al.) to dynamically manage decryption, including passing decryption keys or controlling the decryption process for combined media, to address the specific shortcomings of prior decryptor systems mentioned in the patent.

Obviousness Analysis based on Claim 1 elements:

Receiver, signal detector, processor, local storage medium, transmitter: These individual components are all found or clearly implied in the cited prior art (e.g., receivers from any broadcast system, signal detectors from Haselwood et al., processors and local storage from Dataspeed/Equatorial microcomputers with disk drives, and transmitters implied by "ratings" systems for reporting or Lambert's two-way system).
"wherein said detected embedded signals are used by said apparatus to perform one or more operations": This is the core of the invention.
- Controlling a connection/actuation of external apparatus; tuning said receiver to a particular channel: Bourassin teaches dynamic interconnection of peripherals. Freeman et al. teach multi-channel selection. The explicit limitation noted in the patent regarding Bourassin/Freeman is their lack of control by "instructions transmitted by broadcasters." A POSITA would find it obvious to apply the concept of embedding digital signals (Haselwood et al.) to carry these control instructions, thereby automating the functions described in Bourassin and Freeman based on broadcaster input.
- Processing programming content... in a manner determined by said embedded signals: Dataspeed/Equatorial involves local computer processing, but it's user-programmed. The patent notes its lack of capacity to control processing not input by subscribers. Combining the embedded control signals (Haselwood et al.) with a local processor (Dataspeed/Equatorial's microcomputer) to direct specific processing of content (e.g., generating and overlaying user-specific graphics as described in the 'Wall Street Week' example of US8646001, using Bourassin's overlay technique) would be a straightforward extension for a POSITA seeking to enhance broadcast interactivity and personalization.
- Recording programming content... to said local storage medium...; controlling retransmission of programming content from said local storage medium: VTRs and interactive video systems provide recording and retransmission capabilities. The limitation is the lack of automatic control via embedded signals. A POSITA would find it obvious to integrate the embedded control signals (Haselwood et al.) to trigger and manage these recording and retransmission functions automatically, similar to how addressable systems control decoders.
- Decrypting programming content... in a manner determined by said embedded signals: Dataspeed/Equatorial and other prior art include decryptors and addressable systems for controlling access. While the patent highlights limitations regarding combined media decryption and automatic key identification, the fundamental idea of using control signals (now embedded signals) to manage a decryptor's operation for conditional access would be obvious to a POSITA.

In summary, the shortcomings of the prior art, as articulated within US8646001 itself, provide ample motivation for a POSITA to combine the existing concepts of embedded signaling, local data processing/storage, peripheral control, video overlay, recording, retransmission, and decryption. The primary inventive step, as claimed, appears to be the application of embedded signals not just for identification, but for comprehensive, broadcaster-initiated control of various automated functions at a subscriber's station, including the generation and display of user-specific content. Given the known components and the articulated problems in the art, this combination would have been obvious to a POSITA.