Re: Copyright and multimedia

From: John Noble <jnoble[_at_]dgs.dgsys.com>
Date: Thu, 22 Feb 1996 07:58:38 -0500
('binary' encoding is not supported, stored as-is)

At 12:43 PM 2/21/96 +0000, Tarcisio Cerqueira wrote:
>
> Dear folks from CNI-COPYRIGHT,
>
> The patent claim COMPTON'S NEWMEDIA was granted by the U.S. patent
> Office - however, the Office decided to re-examine it for the
> purpose of deciding whether it should have been granted (U.S.
> Patent No. 5.241.671, assigned to Encyclopaedia Britannica Inc).
>
> Does anyone knows something about this case?

In the Dec. '94 issue of Computer Law Reporter:

     On October 26, 1994 a Patent and Trademark Office Examiner issued a final rejection in the reexamination of the controversial multimedia patent granted to Encyclopedia Britannica, Inc., and co-owned by Compton's NewMedia. The office action followed the patentee's amendment and addition of claims in response to an initial rejection on reexamination. The Examiner relied on seven prior art references, alone or in combination with others, to find all of the remaining and new claims of the patent anticipated or obvious. In addition, the Examiner rejected two of the amended claims under ' 305 as enlarging the scope of the claims, and objected to the specification under '112, first paragraph, on the ground that the specification failed to provide an enabling disclosure and adequate written description in respect of a claimed purely graphical searching means and redundant processing means for independent search paths.

Background

     On August 31, 1993 the PTO granted the patent on a software related invention described as a "multi-media search system using a plurality of entry path means which indicate interrelatedness of information." Compton's announcement of the grant at the November Comdex trade show in Las Vegas created an uproar in the industry. According to an article in the November 15, 1993 Wall Street Journal, patent rights in the software, which allows the user of a multimedia program to retrieve related text, graphics and sound, covered a "fundamental" technology, and could become a "toll-gate on the information highway." The grant was reported and reprinted in CLR, Vol. 18, no. 4 (December, 1993).

     According to the Background section of the patent, the invention addressed limitations in prior software search systems when applied to multimedia products. For example, the Grolier CD-ROM encyclopedia "only accesses textual data by means of text-based entry paths. No facility exists for taking advantage of the CD-ROM's capacity to store pictures, sound or video information."

     The patent abstract described:

A database search system that retrieves multimedia information in flexible, user friendly system. The search system uses a multimedia database consisting of text, picture, audio and animated data. That database is searched through multiple graphical and textual entry paths. Those entry paths include an idea search, a title finder search, a topic tree search, a picture explorer search, a history timeline search, a world atlas search, a researcher's assistant search, and a feature articles search.

     The description of the invention stated that:

In the context of this disclosure and the claims appended hereto, references to an information database can apply to any type of data, any type of format, or any type of storage medium. A preferred embodiment of this invention involves CD-ROM technology. However, the system can also include DVI, CD-I, or any other suitable optical memory devices. The system is adapted to run on any computer device. As an example, the system may run on an IBM AT or other 286, 386 or 486 based computer having similar characteristics as a stand-alone unit. In a network environment, for example, the preferred embodiment can run on an IBM host and on a Novell communications network. However, any computer having sufficient processing speed and memory capability can be employed.

     On December 14, the Commissioner of Patents and Trademarks sua sponte initiated a reexamination proceeding, citing a dozen prior art patents and publications as raising substantial questions of patentability.

     In the March 23 rejection, the examiner relied in large measure on The Complete Hypercard Handbook by Danny Goodman, and several patents on computerized information retrieval systems. The examiner concluded that all 41 claims were either anticipated or obvious in light of the prior art.

     On June 23, Encyclopedia Britannica, Inc. filed its response to March 23 office action. EBI amended the claims "to clarify the ways in which they distinguish over the prior art," canceled one claim, and added six new claims. The response argued that "the scope of [the patent] had been overblown in recent media reports," and that "it is clear when applying In re Donaldson, 16 F.3d 1189 29 U.S.P.Q.2d 1845 (Fed.Cir., 1994), that the claims are distinguishable over the prior art when viewed in light of the specification."

     The amendments to Independent Claim 1 were as indicated:

     A computer search system for retrieving information, comprising: storing means for storing interrelated textual information and graphical information, said storing means including at least one database; means for interrelating said textual and graphical information; a plurality of independently accessible entry path means for searching said stored interrelated textual and graphical information, said entry path means comprising:

textual search entry path means for textually searching said textual information [and for retrieving interrelated graphical information to said searched text]; and

graphics search entry path means for graphically searching said graphical information [and for retrieving interrelated textual information to said searched graphical information];

selecting means for providing a menu of said plurality of entry path means for selection;

each of said textual search entry path means and graphics search entry path means including a processing means for executing inquiries provided by a user in order to search said textual and graphical information through each of said selected entry path means;

indicating means for indicating a pathway that accesses information related in one of said independently accessible entry path means to information accessible in another one of said entry path means;

accessing means for providing access to said related information in said another entry path means;

said textual search entry path means including first retrieving means for retrieving said textual information and interrelated graphical information to said searched textual information;

said graphics search entry path means including second retrieving means for retrieving said graphical information and interrelated textual information to said searched graphical information; and

output means for receiving search results from said processing means and said related information from said accessing means and for providing said search results and received information to such user.

     The six new claims (42-47) were apparatus claims drawn more narrowly to describe a multimedia encyclopedia used on a personal computer. Britannica acknowledged that "certain elements of technology recited in the claims were individually taught or suggested in the prior art," but insisted that "even if all elements of the present patent were found in the prior art, that would not be the end of the patentability inquiry-especially not in this case where the technology covered by the patent has particular applicability to encyclopedia multimedia products."

     In addition to the prior art rejections, the Examiner rejected two of the amended claims as enlarging the scope of the claim in violation of ' 305. The Examiner explained that the proposed amendment of Claim 19 would enlarge its scope because "'inputs' is broader than 'terms or phrases.'" The proposed amendment of Claim 32 would enlarge its scope, according to the Examiner because "the patent claim could be infringed only by systems where the timeline was in a textual entry path, but the claim as amended could be infringed by systems with timelines in any entry path."

     In addition, with respect to the new claims and the claims as amended, the Examiner lodged an objection under ' 112, first paragraph, on the ground that the specification failed to provide an enabling disclosure or an adequate written description of the invention. The objection related to the addition of language in the amended and new claims characterizing the search entry paths as "independently accessible," and the language referring to "graphics search entry path means for graphically searching . . . graphical information."

     According to the Examiner, the specification disclosed only a graphics searching means using a textual picture list, and "the specification does not disclose how these (alphanumeric) lists can be searched non-textually."

     In addition, the patentee represents that the claimed graphical searching means is "purely graphical," the specification and some claim language, which according to the Examiner "implies that: a 'graphics search' may not be based on textual data; and that the information retrieved by a graphics search may not include non-graphical data." But according to the Examiner, the specification and some claim language suggests that the searches are not "purely graphical," and in fact use and present textual information such as "lists" of pictures and picture captions.

     The Examiner also found that the specification did not satisfy the enablement and written description requirements in respect of the claimed "processing means" in "each of said textual search . . . and graphics search entry path means." According to the Examiner:

this suggests that there are eight separate processors, (e.g., one for each entry path . . .). No such processors have been found in the specification or drawings of the original disclosure. . . .

     Moreover, there has been no disclosure of how to build such a multi-processor system or write the necessary control code to enable eight such processors to function "independently" and still coact to perform the claimed operations.

     The Examiner rejected most of the arguments offered in EBI's June 23 response to the initial office action as "moot in view of the new grounds of rejections." The Examiner did, however, address the argument that he had engaged in improper "hindsight reconstruction" in combining prior art references to find the rejected claims anticipated or obvious.

     According to the Examiner, the argument is irrelevant to most of the claims because they were "shown to have been anticipated or made obvious by at least one single reference alone." In addition, the Examiner notes that "the courts have in fact long recognized that an a posteriori review of patent claims inherently involves some form of hindsight." He quotes In re McLaughlin, 170 USPQ 209 (CCPA, 1971):

Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper.

     The Examiner also responds to EBI's reliance on "secondary considerations" as evidence of patentability, characterizing them as not "particularly weighty or persuasive." The Examiner concludes that the widespread acclaim and market success enjoyed by Compton's Multimedia Encyclopedia is "irrelevant because these claims are not to an encyclopedia," but rather can be read on software controlled information retrieval systems generally.

     In addition, as to the claims which are limited to a multimedia encyclopedia, "Patent Owners have failed to show the required 'nexus' between the asserted secondary consideration and the alleged merits of the claimed encyclopedia system." The Examiner notes that much of the media acclaim post-dated the patent filing by months or years, and finds "it is by no means certain that the marketed products that they discuss did not have elements or features not found in the invention disclosed and claimed." In addition, the nonobviousness test is based on the ordinary level of skill in the art, and the Examiner questions whether the authors of the critical acclaim in Newsweek magazine for example, "may not have had 'presumed knowledge . . . of the order expected of a routineer," i.e., one of ordinary skill in the art.

     Finally, the Examiner responded to EBI's argument that the patent claims were "overblown in recent media reports," and that when viewed in light of the specification per In re Donaldson are distinguishable over prior art. According to the Examiner, "when this is done, however, there is scant reassurance because the specification itself suggests why some observers might consider the claims overly broad."

     The Examiner quotes the specification as stating that "the present invention can be used for any application," and thus not limited to an encyclopedia. The Examiner further quotes the specification, adding his own emphasis:

There is no intention, therefore, of limiting this invention to the exact abstract or disclosure presented herein. More particularly, it is contemplated that this invention can be used with any information that can be stored in a database. While the present invention has largely been described with reference to an encyclopedia, other databases of published graphical or textual information could be included.

John Noble
<jnoble[_at_]dgs.dgsys.com> Received on Fri Feb 23 1996 - 03:34:16 GMT

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