Comcast Cable Communications, LLCDownload PDFPatent Trials and Appeals BoardMar 11, 20212019006317 (P.T.A.B. Mar. 11, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/154,409 05/13/2016 Christopher Lintz 26141.0255U1 5718 16000 7590 03/11/2021 Comcast c/o Ballard Spahr LLP 999 Peachtree Street, Suite 1600 Atlanta, GA 30309-4421 EXAMINER HANG, VU B ART UNIT PAPER NUMBER 2672 NOTIFICATION DATE DELIVERY MODE 03/11/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): USpatentmail@ballardspahr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER LINTZ Appeal 2019-006317 Application 15/154,409 Technology Center 2600 Before ST. JOHN COURTENAY III, LARRY J. HUME, and PHILLIP A. BENNETT, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1–20, all of the pending claims in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Comcast Cable Communications, LLC. Appeal Br. 1. Appeal 2019-006317 Application 15/154,409 2 STATEMENT OF THE CASE2 The claims are directed to a system and methods for matching user interests with content and enabling users to access the matched content to improve the content viewing experience for a user. See Spec. ¶¶ 1, 15. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphases added to contested prior art limitations): 1. A method comprising: receiving video content comprising a text component; parsing, from the video content, the text component; determining, based on the parsed text component, one or more topics associated with the content; determining, based on the one or more topics, a topic of interest to a user; determining, based on the topic of interest, a relevant portion of the video content that is relevant to the topic of interest; causing the relevant portion of the video content to be stored for subsequent viewing; and transmitting, to a user device associated with the user, an indication that the relevant portion of the video content is stored. 2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed Mar. 11, 2019); Reply Brief (“Reply Br.,” filed Aug. 26, 2019); Examiner’s Answer (“Ans.,” mailed June 25, 2019); Final Office Action (“Final Act.,” mailed Aug. 9, 2018); and the original Specification (“Spec.,” filed May 13, 2016). Appeal 2019-006317 Application 15/154,409 3 REFERENCES The prior art relied upon by the Examiner as evidence is: Name Reference Date Begeja et al. (“Begeja”) US 2003/0088687 A1 May 8, 2003 Houh et al. (“Houh”) US 2007/0112837 Al May 17, 2007 Sahni et al. (“Sahni”) US 2010/0023506 Al Jan. 28, 2010 Shah et al. (“Shah”) US 2014/0074866 Al Mar. 13, 2014 REJECTIONS Rejection Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis R1 (Final Act. 2) 1–4, 11–15 103 Obviousness Sahni, Begeja R2 (Final Act. 5) 5–9, 16–18, 20 103 Obviousness Sahni, Begeja, Houh R3 (Final Act. 9) 10, 19 103 Obviousness Sahni, Begeja, Shah CLAIM GROUPING Based on Appellant’s arguments (Appeal Br. 4–8) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness Rejection R1 of claims 1–4 and 11–15 on the basis of representative claim 1; and we decide the appeal of obviousness Rejection R2 of claims 5–9, 16–18, and 20 on the basis of representative claim 20. Remaining claims 10 and 19 Appeal 2019-006317 Application 15/154,409 4 in obviousness Rejection R3, not argued separately, fall with the respective independent claim from which they depend.3 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellant. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). We are not persuaded of Examiner error by Appellant’s arguments with respect to obviousness Rejections R1 through R3 of claims 1–20 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner’s Answer in response to Appellant’s arguments. We highlight and address specific findings and arguments regarding Rejection R1 of claim 1 for emphases as follows. 1. § 103 Rejection R1: Claims 1–4 and 11–15 Issue 1 Appellant argues (Appeal Br. 4–8; Reply Br. 2–3) the Examiner’s rejection of claim 1 under 35 U.S.C. § 103 as obvious over the combined 3 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellant does not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appeal 2019-006317 Application 15/154,409 5 teachings of Sahni and Begeja is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a method that includes, inter alia, “determining, based on the topic of interest, a relevant portion of the video content that is relevant to the topic of interest; [and] causing the relevant portion of the video content to be stored for subsequent viewing,” as recited in claim 1? Principles of Law “[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of th[ose] references would have suggested to those of ordinary skill in the art.” Id. at 425. Further, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Finally, during prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using “the broadest reasonable Appeal 2019-006317 Application 15/154,409 6 meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Analysis The Examiner finds Sahni teaches most of the limitations of claim 1 (Final Act. 3–4 (citing Sahni ¶¶ 29, 32, 34, 54, 64, 66, Figs. 1, 2, 5, 6)); and Begeja teaches storing a relevant portion of a video content for subsequent viewing (Final Act. 4 (citing Begeja ¶¶ 101, 107, Figs. 8, 10)). The Examiner further finds “[t]he motivation would be to enable the user device to display specific portions or clips of a video content based on identified user interests.” Final Act. 4. In response to the Examiner’s findings, Appellant contends Begeja, rather than teaching storing a relevant portion of the video content, instead teaches storing all of the video streams, and specifically does not teach or suggest “causing the relevant portion of the video content to be stored for subsequent viewing,” as recited in claim 1. Appeal Br. 5. We disagree with Appellant’s argument because, under the broadest reasonable interpretation standard, we conclude, as a matter of claim construction, storing all of the video streams necessarily includes storing relevant portions.4 4 We note claim 1 does not recite “storing only a relevant portion. . . .” Appeal 2019-006317 Application 15/154,409 7 The Examiner further finds: Sahni teaches retrieving the relevant portions of a video content based on user interest information (see Fig.5 (506), paragraph [0032], paragraph [0034] and paragraph [0064]). Begeja teaches identifying relevant portions of a video and storing the portions in an e-mail as an attachment (see Fig.8 (810, 820), Fig.10 (1035, 1045, 1050), paragraph [0101] and paragraphs [0107-0108]). Begeja also teaches that the relevant portions or clips of the video content can be stored at a local computer for later use (see paragraph [0038]). Ans. 4. We also are not persuaded by Appellant’s arguments because the test for obviousness is what the combined teachings of the prior art would have suggested to the hypothetical person of ordinary skill in the art. See Keller, 642 F.2d at 425. While Appellant focuses on the Sahni reference in the Reply (Reply Br. 2–3), the Examiner finds Begeja teaches “the relevant portions or clips of the video content can be stored at a local computer for later use.” Ans. 4. We are not persuaded the Examiner erred because Begeja’s selecting of “some or all of the video clips for long-term storage” at least suggests the disputed limitation “causing the relevant portion of the video content to be stored for subsequent viewing.” See Begeja ¶ 38. In reviewing the record, we are not persuaded the Examiner’s claim interpretation is overly broad, unreasonable, or inconsistent with the Specification, because Appellant does not point to any limiting definition, in the claim or in the Specification, that would preclude the Examiner’s broad but reasonable construction of the term “portion of the video content,” and Appeal 2019-006317 Application 15/154,409 8 the reading of the disputed limitation onto the cited references.5 We conclude the scope of the construed and contested limitation broadly reads on the teachings in Sahni’s Figure 5, paragraphs 32, 34, 64, and Begeja’s paragraphs 38, 101, 107, 108. Ans. 4. Appellant also argues a lack of motivation to combine the references. Appeal Br. 7–8. We are not persuaded by Appellant’s arguments because the Examiner (Final Act. 4, Ans. 4–5) provides sufficient “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Kahn, 441 F.3d at 988. See also 35 U.S.C. § 132. We are not persuaded of error with the Examiner’s finding that one of ordinary skill in the art would have been motivated to modify Sahni’s method to include Begeja’s storing relevant portions or clips of a video content at a local computer for subsequent viewing. Final Act. 4, Ans. 4–5. We are guided by the Supreme Court’s view of the prior art as a combination of teachings from different sources and the use of those teachings by a practitioner in the art. See KSR, 550 U.S at 401: To determine whether there was an apparent reason to combine the known elements in the way a patent claims, it will often be necessary to look to interrelated teachings of multiple patents; to the effects of demands known to the design community or present in the marketplace; and to the background knowledge possessed by a person having ordinary skill in the art. 5 Because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Appeal 2019-006317 Application 15/154,409 9 Id. The Supreme Court further guides: an improved product in the art is obvious if that “product [is] not [one] of innovation but of ordinary skill and common sense.” KSR, 550 U.S. at 421. We find this reasoning is applicable here. Thus, we find the Examiner's proffered combination of Sahni and Begeja would have merely been a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417. Moreover, Appellant has not provided any evidence that combining the familiar elements and/or methods described in the Examiner’s proffered combination of Sahni and Begeja would have been “uniquely challenging or difficult for one of ordinary skill in the art” (Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)), or would have yielded unexpected results. Based upon the findings above, on this record, we are not persuaded of error in the Examiner’s reliance on the cited prior art combination to teach or suggest the disputed limitations of claim 1, nor do we find error in the Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain the Examiner’s obviousness rejection of independent claim 1, and grouped claims 2–4 and 11–15, which fall therewith. See Claim Grouping, supra. 2. § 103 Rejections R2, R3: Claims 5–10 and 16–20 With respect to the rejections of the dependent claims 5–10 and 16– 19, Appellant does not present substantive arguments. Appeal Br. 8–9. Although Appellant appears to separately argue independent claim 20 in Rejection R2 (id.), the argument is limited to the additionally cited Houh reference, by alleging that Houh also does not teach or suggest storing a Appeal 2019-006317 Application 15/154,409 10 portion of video content or even a relevant portion of video content, as in claim 1. Appeal Br. 9. This argument is essentially the same as made in Issue 1, with respect to independent claims 1 and 12, above. Therefore, we are not persuaded the Examiner erred in rejecting claim 20 under Rejection R2, and claims 5–9 and 16–18, which fall with claim 20. See Claim Grouping, supra. With respect to Rejection R3 of claims 10 and 19, Appellant merely argues “Shah fails to cure the deficiencies of Sahni and Begeja . . . [such that] the combination of Sahni, Begeja, and Shah fails to teach the recitations of claims 10 and 19.” Appeal Br. 9. Therefore, in view of the lack of any substantive or truly separate arguments directed to obviousness Rejections R2, R3: Claims 5–10 and 16– 20 under § 103, we sustain the Examiner’s rejection of these claims. See 37 C.F.R. § 41.37(c)(1)(iv). REPLY BRIEF To the extent Appellant may advance new arguments in the Reply Brief (Reply Br. 2–3) not in response to a shift in the Examiner’s position in the Answer, arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner’s Answer will not be considered except for good cause, which we find Appellant has not shown here. See 37 C.F.R. § 41.41(b)(2). CONCLUSIONS Appellant has not shown that the Examiner erred with respect to obviousness Rejections R1 through R3 of claims 1–20 under 35 U.S.C. Appeal 2019-006317 Application 15/154,409 11 § 103 over the combinations of the teachings of the applied references, and we sustain those rejections. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–4, 11–15 103 Sahni, Begeja 1–4, 11–15 5–9, 16– 18, 20 103 Sahni, Begeja Houh 5–9, 16–18, 20 10, 19 103 Sahni, Begeja, Shah 10, 19 Overall Outcome 1–20 FINALITY AND RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation