Obviousness

To analyze the obviousness of US patent 8,839,293 under 35 U.S.C. § 103, we need to consider the perspective of a Person Having Ordinary Skill in the Art (PHOSITA) at the time of the invention (before the effective filing date of November 3, 1981, as indicated by the priority date claimed from US06/317,510). The PHOSITA is a hypothetical person who is presumed to know the relevant prior art and possess ordinary creativity, but is not an inventor or a genius.

The patent itself identifies several pieces of prior art and explicitly states their limitations, providing a starting point for an obviousness analysis. The "invention relates to an integrated system of programming communication and involves the fields of computer processing, computer communications, television, radio, and other electronic communications." This suggests a PHOSITA in the field of electronic communication systems, likely with expertise in broadcasting, computer networking, and signal processing. Factors to consider for the PHOSITA include the type of problems encountered, prior art solutions, rapidity of innovation, sophistication of technology, and educational level of active workers in the field. Given the complexity of the claimed invention, a PHOSITA would likely be an engineer or computer scientist with practical experience in these areas.

Obviousness Analysis

Core Concept of US 8,839,293: The patent focuses on an integrated system for communicating programming that can embed control signals in broadcast transmissions, enabling interactive and personalized experiences at the receiver's end. This includes coordinating various devices, generating user-specific information, and monitoring usage.

Let's examine some of the independent claims and how they might be rendered obvious by combining the identified prior art.

Claim 1: "A method for operating an information receiver, said method comprising: receiving a transmission comprising information and embedded control signals; and operating a processor in said information receiver in response to said embedded control signals to control operation of at least one device coupled to said information receiver in coordinated relation with said information of said transmission."

• Prior Art:

  • Dataspeed Corporation (Lotus Development Corporation) and Equatorial Communications Company: These systems transmit real-time financial data over radio frequencies or satellite to microcomputers equipped with "modios" (radio receivers, modems, decryptors). Subscribers program their apparatus to select data of interest. The patent notes their limitation: "It only transmits data; it does not control data processing."
  • Lambert U.S. Pat. No. 4,381,522: Describes a cable television system controlled by a minicomputer that responds to viewer signals (by telephone) to generate a program schedule and actuate preloaded video tape/disc/film players. The patent notes its limitation: "It has no capacity to schedule automatically or transmit any programming other than that loaded immediately at the play heads of the controlled video players. It has no capacity to cause the video players to record programming from any source. It has no capacity to receive programming transmissions or process received transmissions in any way. It has no capacity to operate under the control of instructions transmitted by broadcasters. It has no capacity to insert signals that convey information to or control, in any way, the automatic operation of ultimate receiver station apparatus other than television receivers."
  • Bourassin et al. U.S. Pat. No. 4,337,480: Describes a dynamic interconnection system for connecting a television receiver to multiple peripheral units, allowing viewers to automatically connect/disconnect units and superimpose a secondary image (image-within-image). The patent notes its limitation: "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. It has no capacity for coordinating the programming content transmitted by any given peripheral system with any other programming transmitted to a television receiver."
  • "Addressable" systems: The patent mentions these systems as capable of "controlling specific individual subscriber station apparatus by means of control instructions transmitted in broadcasts," citing their use for turning decoder/decryptor apparatus on or off based on bill payment.

• Motivation for Combination: A PHOSITA would have been motivated to combine the "addressable" systems with the data transmission capabilities of Dataspeed/Equatorial and the peripheral control of Bourassin.

  • The "addressable" systems demonstrate the concept of control signals embedded in a broadcast to manage receiver-side apparatus.
  • Dataspeed/Equatorial show the ability to transmit data to individual microcomputers, even if they don't explicitly "control data processing" in a broad sense.
  • Bourassin illustrates the desire and capability to automatically connect and disconnect peripheral units to a main display.

  The limitation noted in Dataspeed/Equatorial ("it does not control data processing") explicitly points to a problem a PHOSITA would seek to solve. Given that "addressable" systems already allowed for on/off control of decoders via broadcast signals, extending this concept to more sophisticated control of other devices (as in Bourassin) in coordination with the main programming would be a logical next step. For example, using broadcast control signals to trigger the recording function of a VCR (a "device coupled to said information receiver") in sync with a television program would be an obvious improvement to the manual operation described for VCRs in the patent's prior art section. The general desire for "great ease of use" and "transparency" noted as advantages of the claimed invention would also motivate a PHOSITA to automate and coordinate device operation via embedded signals.

Claim 14: "A method for creating a personalized information presentation for a user, said method comprising: receiving a broadcast comprising an embedded control signal; generating user specific information at a local processor; and combining said user specific information with said broadcast information to create a personalized information presentation for said user, wherein said combining is in response to said embedded control signal."

• Prior Art:

  • Dataspeed Corporation and Equatorial Communications Company: These transmit real-time financial data to microcomputers, and "Each subscriber programs his subscriber station apparatus to select particular data of interest." The patent highlights a limitation: "None has any capacity to cause simultaneous generation of user specific information at a plurality of receiver stations." and "None has any capacity to cause subscriber station computers to process received data, let alone in ways that are not inputted by the subscribers."
  • "Interactive video" systems: These 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 notes a limitation: "It has no capacity for operating on the basis of control signals transmitted to recorder/players at a plurality of subscriber stations, let alone operating on the basis of such signals to record user specific information at each subscriber station."
  • Freeman et al. U.S. Pat. No. 4,264,925: Describes a multi-channel programming transmission system where subscribers manually select programming alternatives.
  • Bourassin et al. U.S. Pat. No. 4,337,480: Describes "image-within-image" capability for superimposing a secondary image from a peripheral unit onto a primary television image.

• Motivation for Combination: A PHOSITA would have been motivated to combine the concept of user-selected data (Dataspeed/Equatorial) with the "image-within-image" display (Bourassin) and control via broadcast signals (as seen in "addressable" systems).

  • Dataspeed/Equatorial clearly teaches the generation of user-specific information (e.g., selected financial data) and its display on a local computer.
  • Bourassin teaches the technical capability of combining two images (a primary and a secondary) on a single display.
  • The "addressable" systems, as discussed before, teach using broadcast signals to control receiver apparatus.

  The patent explicitly states that Dataspeed/Equatorial "has no capacity to cause simultaneous generation of user specific information at a plurality of receiver stations" and "no capacity to cause subscriber station computers to process received data, let alone in ways that are not inputted by the subscribers." This identifies gaps a PHOSITA would naturally try to fill. By combining the broadcast control element (from "addressable" systems or even the general idea of broadcast control for VCRs mentioned in the specification) with the local generation of user-specific data (Dataspeed/Equatorial) and the display overlay capability (Bourassin), a PHOSITA would arrive at a system where a broadcast signal could trigger the display of locally generated, personalized information (like the stock portfolio example given in the patent) simultaneously for multiple users. The goal of providing "personalized and private" programming, as articulated in the patent, would drive this combination.

Claim 26: "A method for controlling a video display, said method comprising: receiving a video transmission comprising video information and embedded control information; operating a processor in a receiver in response to said embedded control information to generate graphic information; and combining said graphic information with said video information to create a combined graphic and video display."

• Prior Art:

  • Bourassin et al. U.S. Pat. No. 4,337,480: Teaches "image-within-image," where a secondary image from a peripheral unit can be superimposed on a primary television image.
  • "Addressable" systems: Show the use of broadcast control instructions to manage receiver apparatus.
  • Computer graphics (general knowledge): The field of computer processing, mentioned as part of the invention's scope, implies that generating graphic information at a local processor was a known capability. The patent references an IBM Personal Computer with a Techmar Graphics Master Card for generating computer graphic information and combining it with video information by "graphic overlay techniques, well known in the art."

• Motivation for Combination: A PHOSITA, aware of Bourassin's "image-within-image" capability and the existence of computer graphics hardware/software, would be motivated to use embedded control information from a broadcast to trigger and synchronize the generation and overlay of locally generated graphics. The limitation of Bourassin, requiring manual switching, would be a problem a PHOSITA would seek to overcome by using broadcast control signals. The patent itself states that an advantage of its invention is "great ease of use" and "transparency," which directly addresses the manual nature of prior art systems. The example in the patent where "GRAPHICS ON" and "GRAPHICS OFF" commands, embedded in a broadcast, control the overlay of a locally generated stock performance graph onto a studio-generated graphic, perfectly illustrates this combination. The idea of coordinating a locally generated graphic with broadcast content to enhance understanding (e.g., showing a personal stock portfolio in sync with a market report) would be a clear motivation for a PHOSITA.

General Considerations for Obviousness

• KSR International Co. v. Teleflex Inc. (2007): The Supreme Court's decision in KSR emphasizes that a PHOSITA is not an automaton but possesses ordinary creativity and can combine prior art elements in predictable ways to solve problems or improve existing designs. If the prior art suggests the combination, or if the combination is an obvious solution to a known problem, the invention may be obvious. The patent explicitly states limitations of prior art systems, thereby defining "problems encountered in the art" that a PHOSITA would naturally try to solve.
• Problem/Solution Approach: The patent itself frames the invention as overcoming limitations in prior art systems, many of which relate to a lack of automation, personalization, and coordinated control via broadcast signals. For a PHOSITA, these identified problems would naturally lead to exploring combinations of existing technologies to achieve the desired improvements.
• "Teaching, Suggestion, or Motivation" (TSM) Test: While KSR broadened the obviousness inquiry beyond a rigid TSM test, it remains relevant to consider whether the prior art (or general knowledge of a PHOSITA) would have provided a teaching, suggestion, or motivation to combine the references. Here, the prior art explicitly reveals capabilities that, when combined, directly address the limitations identified by the patent. The desire for more interactive, personalized, and automated broadcast experiences would provide strong motivation.

In conclusion, a strong argument for obviousness could be made for many of the independent claims of US 8,839,293 by combining elements from the identified prior art references. The PHOSITA, acting with ordinary creativity and knowledge of the problems in the field, would have been motivated to integrate broadcast control signals with local processing, data generation, and peripheral device management to achieve the benefits of automation, personalization, and enhanced user experience described in the patent.