DISH Technologies L.L.C.

Patent Trials and Appeals Board

Oct 23, 2020

2019003337 (P.T.A.B. Oct. 23, 2020)

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.
15/166,119 05/26/2016 Michael Alexander P2010-03-14.1 (1157227) 1492
100597 7590 10/23/2020
KILPATRICK TOWNSEND & STOCKTON LLP (DISH)
DISH Network L.L.C.
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
HUYNH, AN SON PHI
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
10/23/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL ALEXANDER
____________

Appeal 2019-003337
Application 15/166,119
Technology Center 2400
____________

Before ELENI MANTIS MERCADER, ADAM J. PYONIN, and
GARTH D. BAER, Administrative Patent Judges.

BAER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2019-003337
Application 15/166,119

2
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 21–40, which are all pending claims. Appeal Br.
29–37. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

BACKGROUND
A. The Invention
Appellant’s invention is directed to a “history-based decision
facilitator (‘HBDF’)” that “facilitates decision making in a television
receiver based on device history data received from the television receiver.”
The HDBF “receives an indication of an operation to be performed by the
television receiver” and then “determines values” for one or more
parameters “based on the device history data.” Abstract. Independent
claims 21 and 23 are representative and reproduced below with emphasis
added:
21. A computing system for facilitating history-based
decision making in a television receiver, comprising:
a memory; and
a module stored on the memory that is executed by
a processor in the television receiver to:
receive from one or more television receivers
device history data, wherein the device history data
includes indications of a plurality of previously
performed view operations to view one of a program or a
channel that has been viewed, a plurality of previously
performed delete recording operations that have deleted

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies EchoStar Technologies L.L.C. as the real party in
interest. Appeal Br. 1.
Appeal 2019-003337
Application 15/166,119

3
a previously recorded program, or a plurality of
previously performed record operations that have
recorded a program,
wherein the indications of the previously
performed view operations each include a time or a time
interval defining times that the view operation was
previously performed by the associated television
receiver,
wherein the indications of the previously
performed delete recording operations each include a time
that the delete recording operation was performed by the
associated television receiver,
wherein the indications of the previously
performed record operations each include a time or a time
interval defining times that the record operation was
previously recorded by the associated television receiver,
and
wherein the indications of the previously
performed operations each include information that
identifies the associated television receiver that performed
the operation;
receive an indication of a user-specified
function to be performed by the television receiver, the
function including one or more parameters that specify
recording a program at an indicated time;
accessing the device history data in response
to receiving the indication;
determine values for the one or more
parameters,
wherein the determined values for the
one or more parameters are based on the received device
history data, and
wherein the determined value controls
the record operation that is to be performed by an
identified television receiver when the program is
recorded by the identified television receiver; and
cause the identified television receiver to
perform the recording based upon the determined values
for the one or more parameters.
Appeal 2019-003337
Application 15/166,119

4

23. A computing system for facilitating history-based
decision making m a television receiver, comprising:
a memory; and
a module stored on the memory, when executed,
causes the computing system to:
receive from one or more television receivers
device history data,
wherein the device history data includes
indications of a plurality of previously performed view
operations to view one of a program or a channel that has
been viewed, a plurality of previously performed delete
recording operations that have deleted a previously
recorded program, or a plurality of previously performed
record operations that have recorded a program that have
been previously performed by a plurality of the television
receivers,
wherein the indications of the previously
performed view operations each include a time or a time
interval defining times that the view operation was
previously performed,
wherein the indications of the previously
performed delete recording operations each include a time
that the delete recording operation was performed,
wherein the indications of the previously
performed record operations each include a time or a time
interval defining times that the record operation was
previously recorded, and
wherein the indications of the previously
performed operations each include information that
identifies the associated television receiver that performed
the operation;
receive an indication of a user-specified
function to be performed by an identified one of the
plurality of television receivers, the function to be
performed by the television receiver including one or more
parameters that specify recording a program at an
indicated time;
Appeal 2019-003337
Application 15/166,119

5
accessing the device history data in response to
receiving the indication;
determine values for the one or more parameters,
based on the received device history data associated with
the television receiver;
determine that there is an insufficient amount of
device history data about the identified television receiver
to determine the values for the one or more parameters;
in response to determining that there is
insufficient device history data associated with the
identified television receiver, determine the values for the
one or more parameters based on the device history data
received from at least one other television receiver of the
plurality of television receivers; and
cause the identified television receiver to perform
the recording based upon the determined values for the one
or more parameters.

Appeal Br. 29–31 (Claims App.).

B. The Rejection on Appeal
The Examiner rejects claims 21–40 under 35 U.S.C. § 103(a) as
unpatentable over Putterman (US 2005/0002638 A1; published Jan. 6,
2005), Higashi (US 2004/0133448 A1; published July 8, 2004), Shimy (US
2011/0072452 A1; published Mar. 24, 2011), and Sugiura (US
2009/0249204 A1; published Oct. 1, 2009). Final Act. 6–7.2

2 The rejection also cites applications incorporated by reference in Shimy,
including the following:
1. Ellis (US 2005/0028208 A1; Feb. 3, 2005) (hereinafter “E208”);
2. Ellis (US 2002/0174430 A1; Nov. 21, 2002) (hereinafter “E430); and
3. Ellis (US 2003/0149988 A1; Aug. 7, 2003) (hereinafter “E988”).
See, e.g., Final Act. 7.

Appeal 2019-003337
Application 15/166,119

6
ANALYSIS
A. Obviousness Rejection of Claim 21
Appellant argues that the
Examiner asserts that the Putterman PVR system performs
various operations based on indications of a plurality of view
operations, indications of the delete recording operations, and
indications of the record operations. However, even though the
various Putterman PVR system operations might possibly relate
to various aspects of recording, the operations of the Putterman
PVR system are based on current operating conditions (in
contrast to historical operating conditions stored in the device
history data that are data of previously performed operations).
Appeal Br. 11.
We agree. The Examiner finds that
Putterman discloses a client, as used herein, is any device
that playback media . . . and the user queries the PVR system to
determine other client tuned to be selected program. If other
clients are tuned to the selected program, then the system
displays a list of clients (devices) tuned to the program, . . .
indicating television tuner is recording . . . (see include, but are
not limited to, [¶¶ 34, 36]). Thus, device history data obviously
includes indications of a plurality of previously performed view
operations to view programs or channel, . . . must be
received/included in order to display a list of clients tuned to the
program or tuner is recording program, busy, free, etc. or to
display a list of clients tuned to the program/currently playing the
selected program as described in [¶¶ 34, 36]. (note: the client is
defined, in [¶ 22], as any device that playback media). Putterman
also discloses previously performed deleted operations or
plurality of previously performed recorded operations that have
recorded a program (see include, but are not limited to, [¶¶ 39,
43, 51, 51, Fig. 7]). Thus, the recording operation must be
previously start performing on other client in order for system to
display a list of client that tuned to program or the client is busy
(the client is currently busy based on previously operation of
tuning/recording).
Appeal 2019-003337
Application 15/166,119

7

Ans. 27. We agree with Appellant that Putterman’s cited portions describing
“other clients tuned [to] the selected program” (Putterman ¶ 34) relate to the
clients’ current operating status. Similarly, Putterman’s assignment of
“states to television tuners” describes the each tuner’s current state. See
Putterman ¶ 36.
Regarding the Examiner’s finding that “Putterman also discloses
previously performed deleted operations or plurality of previously
performed recorded operations that have recorded a program,” Putterman’s
cited portions describe certain deletion operations, but the Examiner supplies
no explanation regarding how the cited portions teach or suggest the claim
limitations.
Appellant also contends that “Shimy does not go so far as to disclose
that device history, such as the Shimy event log, may be used to determine
values for parameters that are used to record programs.” Reply Br. 31.
We agree. The Examiner finds that the limitations of
receiv[ing] an indication of a user-specified function to
be performed by the television receiver, the function including
one or more parameters that specify recording a program at an
indicated time;
accessing the device history data in response to receiving
the indication;
determine values for the one or more parameters,
wherein the determined values for the one or more
parameters are based on the received history data, and
wherein the determined value controls the record
operation that is to be performed by an identified television
receiver when the program is recorded by the identified
television receiver; and;
Appeal 2019-003337
Application 15/166,119

8
cause the identified television receiver to perform the
recording based upon the determined values for the one or more
parameters

are taught or suggested by Shimy, because
receiving selection for recording/setting for recording of a
particular program, and history data is retrieved to determine
whether any recording is scheduled for recording at the select
time, or [a] program [has] been recorded by previous user, buffer
availability, etc. [I]f a program is previously recorded, or a
conflict of time, etc. a notification is provide to allow user to
resolve the recording or if there is no conflict or recording
schedule, buffer availability, etc. is allowed, then recording
setting/selection is accepted and user identified device/selected
device will record the select program.

Ans. 28–29, citing:
1. Shimy: Figs. 11, 14–16; E208: Figs. 11, 22, ¶¶ 218–220;
2. E988: Figs. 18a–18f, 26–31, ¶¶ 114, 167–169, 200; and
3. E430: Figs. 4, 6–7, 11; ¶¶ 23, 25, 36, 64, 170, 175, 197, 265, 266,
279, 292, 403.
Here, the Examiner has appeared to restate the claim language and
provide a string of citations to Shimy and the other related references,
without sufficient analysis describing how Shimey’s particular teachings
meet the recited claim language. We do not find sufficient support in
Shimy’s cited portions or in the other related references’ cited portions for
the Examiner’s position. Similarly, we do not find sufficient support in the
references’ (Putterman, Shimy, Higashi, and Sugiura) cited portions for the
Examiner’s position that these references, when combined, teach or suggest
determin[ing] values for the one or more parameters,
Appeal 2019-003337
Application 15/166,119

9
wherein the determined values for the one or more
parameters are based on the received device history data, and
wherein the determined value controls the record
operation that is to be performed by an identified television
receiver when the program is recorded by the identified
television receiver.

Accordingly, we are constrained by the record to reverse the
Examiner’s rejection of independent claim 21 and independent claims 32
and 38 commensurate in scope, as well as dependent claims 22, 27–31, 33–
37, and 39.

B. Obviousness Rejection of Claims 23 and 40
Appellant argues that
the Shimy user preferences as discussed in [¶ 127] are unrelated
to any type of determination “that there is an insufficient amount
of device history data about the identified television receiver to
determine the values for the one or more parameters.” At most,
Shimy is expressly disclosing that user preferences may vary
between different media devices, and then provides various
example user preferences. There is simply no discussion
whatsoever of any type of insufficiency in the amount of device
history data in Shimy [¶ 127]. That is, Shimy [¶ 127] is unrelated
to the recited features of Claims 23 and 40.

Reply Br. 32.
We agree. The Examiner finds that Shimy teaches or suggests the
limitation of “determin[ing] that there is an insufficient amount of device
history data about the identified television receiver to determine the values
for the one or more parameters” because the limitation
is read on determine, based on user preference(s), profile/setting
that there is an insufficient amount of device history data such as
no reference setting for permitting accessing the content or no
Appeal 2019-003337
Application 15/166,119

10
access allowance based on parental control setting or program is
not recorded previously on the device, program is not viewed on
one device, not enough requests for recording at server, etc.
Ans. 33, citing
1. Shimy: Figs. 15–16, ¶¶ 127, 128, 111–115, 170–175;
2. E208: Figs. 17–21, ¶¶ 19, 24–26, 120, 121;
3. E430: ¶¶ 23, 25, 175, 197, 0403; and
4. E988: Figs. 18a, 18f, 27.
We do not find support in Shimy’s cited portions and in the other related
references’ cited portions for the Examiner’s position. Similarly, we do not
find support in the references’ (Putterman, Shimy, Higashi, and Sugiura)
cited portions for the Examiner’s position that these references, when
combined, teach or suggest the limitation “determin[ing] that there is an
insufficient amount of device history data about the identified television
receiver to determine the values for the one or more parameters.”
Accordingly, we are constrained by the record to reverse the
Examiner’s rejection of independent claim 23 dependent claim 40.
CONCLUSION
In summary:

REVERSED

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–40 103(a) Putterman,
Higashi, Shimy,
Sugiura
21–40