DISH Technologies L.L.C.

Patent Trials and Appeals Board

Aug 4, 2020

2019003239 (P.T.A.B. Aug. 4, 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.
15/171,896 06/02/2016 Kerry Philip Miller ES-1038.1 (290110.405C1) 4421
70336 7590 08/04/2020
Seed IP Law Group/DISH Technologies (290110)
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
FLYNN, RANDY A
ART UNIT PAPER NUMBER
2424
NOTIFICATION DATE DELIVERY MODE
08/04/2020 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KERRY PHILIP MILLER

Appeal 2019-003239
Application 15/171,896
Technology Center 2400
Before JAMES R. HUGHES, JUSTIN BUSCH, and
LINZY T. McCARTNEY, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–31, which are all the claims pending.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as DISH
Technologies L.L.C. Appeal Br. 1.
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STATEMENT OF THE CASE
INTRODUCTION
The claimed subject matter generally relates to “systems and methods
for extended recording time of a channel of a program.” Spec. ¶ 1. More
specifically, the claimed systems and methods for optionally recording, in
addition to a program of interest, time before and after the program of
interest and, upon a user initiating playback of the program of interest,
presenting the user with an option to select which parts of the recording (i.e.,
which combination of the program of interest, the time before the program
of interest, and the time after the program of interest) the user wishes to
play. See, e.g., Spec. ¶¶ 2–3, 22, 39–42, 68–70. Claims 1, 16, and 25 are
independent claims. Claim 1 is reproduced below:
1. A method for recording programs, comprising:
identifying a program selected for recording as a program
of interest based upon the program selected for recording having
at least one characteristic corresponding to at least one
characteristic of a previous program for which at least one of an
advance period associated with
recording an advance period associated with the program
of interest, the advance period corresponding to a period before
a beginning of the program of interest;
recording a following period associated with the program
of interest, the following period corresponding to a period after
a conclusion of the program of interest;
receiving an indication from a user to initiate a process of
retrieving and presenting the program of interest;
in response to the receiving the indication from the user to
initiate a process of retrieving and presenting the program of
interest, before any presentation of the program of interest,
enabling the user to choose which of the recorded advance
period, the program of interest, and the recorded following
period are selected for presentation;
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if the user chooses only the recorded advance period,
retrieving and presenting only the recorded advance period and
neither the program of interest nor the recorded following period
in response to the user choosing only the recorded advance
period; and
if the user choses only the program of interest, retrieving
and presenting only the program of interest and neither the
recorded advance period nor the recorded following period in
response to the user choosing only the program of interest.
THE PENDING REJECTIONS
Claims 1–24 stand rejected under 35 U.S.C. § 103 as obvious in view
of Dolph (US 2007/0286582 A1; Dec. 13, 2007), Ellis (US 2006/0222325
A1; Oct. 5, 2006), and Pierre (US 2003/0070183 A1; Apr. 10, 2003). Final
Act. 7–21.
Claims 25, 27, 28, and 31 stand rejected under 35 U.S.C. § 103 as
obvious in view of Dolph, Ellis, Pierre, and Kuroda (US 6,311,011 B1;
Oct. 30, 2001). Final Act. 22–27.
Claim 26 stands rejected under 35 U.S.C. § 103 as obvious in view of
Dolph, Ellis, Pierre, Kuroda, and Tobiishi (US 7,369,744 B2; May 6, 2008).
Final Act. 27–28.
Claims 29 and 30 stand rejected under 35 U.S.C. § 103 as obvious in
view of Dolph, Ellis, Pierre, Kuroda, and Bumgardner (US 2003/0206719
A1; Nov. 6, 2003). Final Act. 28–30.
ANALYSIS
The Examiner rejects each of independent claims 1 and 16 as obvious
in view of Dolph, Ellis, and Pierre. Final Act. 7–11, 19. The Examiner
rejects independent claim 25 and claim 31, which depends directly from
claim 25, as obvious in view of Dolph, Ellis, Pierre, and Kuroda. Final
Act. 22–27; see Final Act. 14–15, 20 (addressing the additional elements
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recited in claims 9 and 19, which the Examiner explains are similar to the
additional limitation recited in claim 31). Appellant does not contest the
Examiner’s findings regarding Ellis or Kuroda; nor does Appellant directly
contest the Examiner’s rationale for combining the variously cited teachings.
Of particular relevance to this Appeal, the Examiner finds Dolph
teaches recording advance and following periods associated with a program
of interest that is being recorded and, upon a user selecting a recording
program for playback and before presenting the program, presenting the user
a message that allows the user to select whether to play the advance period
with the program of interest. Final Act. 7–8 (citing Dolph ¶¶ 25, 37, 38, 40,
Fig. 5 (504)). The Examiner finds Pierre teaches recording content segments
(e.g., summaries and corrections) in addition to the selected program and,
when a user selects a program for playback, letting the user select which
segments the user wishes to play. Final 10–11 (citing Pierre ¶¶ 80, 81,
85–87, Figs. 11B, 12A, 12B).
Appellant argues the cited references fail to teach or suggest “in
response to the receiving the indication from the user to initiate a process of
retrieving and presenting the program of interest, before any presentation of
the program of interest, enabling the user to choose which of the recorded
advance period, the program of interest, and the recorded following period
are selected for presentation” (the “disputed limitation”), as recited in claim
1. Appeal Br. 8–10; Reply Br. 4–5. Appellant argues claims 1–30 as a
group, but Appellant presents an additional argument for dependent claim
31. See Appeal Br. 11–12 (arguing (1) claims 2–15, which ultimately
depend from claim 1; (2) independent claim 16, which recites a limitation
commensurate in scope to the disputed limitation; (3) claims 17–24, which
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ultimately depend from claim 16; (4) claim 25, which recites a limitation
commensurate in scope to the disputed limitation; and (5) claims 26–31,
which ultimately depend from claim 16 are not obvious for the same reasons
presented with respect to claim 1). We select independent claim 1 as
representative of claims 1–30. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant and the Examiner agree that Dolph teaches (1) recording “a
program of interest,” “an advance period,” and “a following period” (the
advance and following periods being “associated with the program of
interest”) and (2) upon a user request to view the program of interest,
presenting an option that lets the user choose whether to play the advance
period along with the program of interest. Final Act. 7–8 (citing Dolph
¶¶ 25, 37, 38); Appeal Br. 10 (arguing that Dolph teaches offering a user one
option to play an advance period along with the program of interest and
another option to play a following period after playing back the program of
interest (citing Dolph ¶¶ 40, 42, Fig. 5)); Ans. 4–5 (citing Dolph ¶¶ 25, 35,
37, 38, 40, Fig. 5 (504)); Reply Br. 4. The Examiner finds Dolph (in
combination with Ellis) does not explicitly teach “enabling a user to choose
which of the recorded segments are selected for presentation.” Final Act.
10; see Ans. 4-5.
However, the Examiner finds Pierre teaches allowing a user to select
which content (of the variously recorded content or segments related to the
program of interest) the user wishes to view when the user selects the
recorded program of interest. Final Act. 10–11 (citing Pierre ¶¶ 85–87,
Figs. 11B, 12A, 12B); Ans. 4–5. The Examiner explains that the
combination of references, therefore, teaches the disputed limitation—i.e.,
selecting which of the particular recited segments to play back without
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playing back other segments associated with the program of interest. Final
Act. 11; Ans. 5–6.
Appellant asserts Pierre fails to cure the identified deficiency because
Pierre does not teach letting a user choose from the advance period, the
program of interest, and the following period. Appeal Br. 10; Reply Br. 4.
Appellant contends Pierre merely allows a user to either play a summary or
segments of the program. Appeal Br. 10; Reply Br. 4. Appellant argues the
summary is a separate program that “is not a recorded segment of the
program,” let alone one of the recited “advance period,” program of
interest,” and “following period.” Appeal Br. 10 (citing Pierre ¶ 51).
Appellant argues Pierre’s segments are part of the program of interest that
are different than the recited advance or following periods, which are
periods recorded prior to or after the program, not segments of the program
of interest itself. Reply Br. 4.
Nonobviousness cannot be established by attacking references
individually when the rejection is based on a combination of references.
Ans. 5–6 (citing In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck &
Co., 800 F.2d 1091 (Fed. Cir. 1986)). As the Examiner explained, the
rejection is based on a combination of references.
The Examiner explicitly identified the aspects of the disputed
limitation that Dolph fails to teach and explains which of Pierre’s teachings
are used to modify Dolph’s interface. Specifically, the Examiner explains
that modifying Dolph, which teaches (1) recording the particularly recited
content segments and (2) letting the user choose whether to play the advance
period with the program of interest when the user selects the program of
interest, to incorporate Pierre’s option to play back any combination of the
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various segments associated with the program of interest (i.e., the advance
period, the program of interest itself, and the following period) provides an
improved user viewing experience. See Final Act. 11; Ans. 5–6.
The Examiner does not rely on Pierre’s summary (or any other
segments in Pierre) to teach recording the advance or following period and,
therefore, the Examiner does not rely on Pierre to teach providing an option
to play those particular recited segments (i.e., the advance or following
period). Rather, the Examiner finds Pierre, similar to Dolph, records
segments other than the program of interest that are associated with the
program of interest. The Examiner finds Dolph teaches recording an
advance period and following period that correspond to the program of
interest and a user interface that lets the user choose to play the advance
period with the program of interest. The Examiner relies on the resulting
combination to teach the disputed limitation.
Specifically, the Examiner concludes a person of ordinary skill in the
art would have applied Pierre’s user interface that lets the user choose to
play any combination of any of the variously recorded segments
corresponding to the program of interest (not the particular segments Pierre
teaches) to improve Dolph. Thus, the Examiner finds the resulting
combination teaches a user interface that, upon the user selecting a program
of interest, lets the user select which recordings corresponding to the
program of interest (i.e., Dolph’s pre-content, content, and post-content) the
user wishes to play. Accordingly, Appellant’s arguments are not persuasive
because they fail to consider or address the Examiner’s proposed combined
teachings.
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Appellant further contends Pierre does not enable playing the
summary in response to a user selecting to initiate presenting the program of
interest, but instead Pierre teaches initiating playing the program of interest
after playing the summary. Appeal Br. 10 (citing Pierre ¶¶ 86, 87,
Fig. 12B). Appellant also asserts Pierre teaches presenting “all recorded
content corresponding to the news channel, not only a particular segment.”
Appeal Br. 10 (citing Pierre ¶ 85).
To the extent Appellant’s arguments address the differences between
Pierre’s summaries and the recited “advance period” and “following period,”
this argument unpersuasively argues the references individually as discussed
above. To the extent that Appellant is arguing Pierre does not teach
presenting a user interface to let the user select the particular content
segments associated with the program of interest the user wishes to play “in
response to receiving the indication from the user to initiate a process of
retrieving and presenting the program of interest,” we disagree.
Pierre teaches a system that allows a user to record a program of
interest as well as other content related to the program of interest. See, e.g.,
Pierre ¶¶ 51 (describing a “Summary” as a content segment that is a
summary of content from a different broadcast), 80–81 (describing the
options presented when a user chooses to record a local news program,
which may include an option “to record any available summary, in addition
to the corresponding program” and an option “to indicate the corrections
corresponding to the current selection are to be recorded as well”), Fig. 11B.
Once the content has been recorded, if the user selects the recorded program,
the system presents an interface that lets the user select the corresponding
content the user wishes to view. Pierre ¶¶ 85 (describing a user selecting an
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icon to display content recorded that “corresponds to the ALL NEWS
channel”), 86 (“A first check box 1260 entitled ‘View’ allows a viewer to
indicate the selected item is to be played from the recording.”), Fig. 12B.
Appellant’s argument that Pierre only lets a user play the program of
interest after playing the summary is unpersuasive and inconsistent with
Pierre’s teachings. Specifically, as explained in the prior paragraph, after
the user selects the program of interest to imitate presenting the program of
interest, Pierre provides an option to select any segments, including the
program of interest and a Summary. See Pierre ¶¶ 85–87, Fig. 12B. Pierre
does not present any of the content until after the user selects which
particular content the user wishes to view.
Appellant is correct that Pierre allows a user to view all content that
was recorded as corresponding to a program. Pierre ¶ 87 (“option 1292C
permits a viewer to begin playing all recorded summaries,”). However,
viewing only the Summaries is merely one option Pierre’s system provides.
See Pierre ¶ 86. Pierre also “allows a viewer to play only those items which
have been selected for play.” Pierre ¶ 87. Thus, we find Appellant’s
arguments unpersuasive.
Finally, Appellant argues the cited references fail to teach a
notification message that “indicates availability of selection between the
recorded advance period, the program of interest and the recorded following
period for presentation” (the “notification message limitation”), as
additionally recited in dependent claim 31. Appeal Br. 12; Reply Br. 6.
Similar to Appellant’s arguments with respect to independent claim 1,
Appellant argues Dolph teaches two notification messages—one message
prior to playback that lets the user play the pre-content with the content and
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one message after the content finishes playing that lets the user play the
post-content. Appeal Br. 12; Reply Br. 6. Appellant thus argues Dolph fails
to teach the single notification message recited in claim 31 that indicates
availability of selecting any of the advance period, program of interest, and
following period for playback. Appeal Br. 12; Reply Br. 6.
As with the disputed limitation recited in independent claim 1, the
Examiner finds a combination of Dolph and Pierre teaches or suggests the
notification message limitation. Final Act. 14–15 (citing Dolph ¶¶ 25, 35,
37, 40, 42; Pierre, Fig. 12B), 20, 27; Ans. 7. For similar reasons, we find
Appellant’s arguments unpersuasive. Appellant fails to consider or address
the proposed combined teachings. As with the disputed limitation recited in
claim 1, the Examiner finds Dolph’s notification messages, modified in view
of Pierre’s message that presents a user an option to play any recorded
segment of content related to the program of interest, teach or suggest the
notification message limitation. Ans. 7.
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 103 as obvious in view of Dolph, Ellis, and Pierre. We also
sustain the rejection of claims 2–24, which Appellant does not argue
separately with particularity, under 35 U.S.C. § 103 as obvious in view of
Dolph, Ellis and Richards. For the same reasons, we sustain the rejections
of claims 25–31, which Appellant does not argue separately with
particularity, under 35 U.S.C. § 103 as obvious in view of Dolph, Ellis, and
Pierre in further view of Kuroda or Kuroda and one of Tobiishi and
Bumgardner.
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DECISION SUMMARY
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
1–24 103 Dolph, Ellis, Pierre 1–24
25, 27, 28,
31 103
Dolph, Ellis, Pierre,
Kuroda
25, 27,
28, 31
26 103 Dolph, Ellis, Pierre, Kuroda, Tobiishe 26
29, 30 103 Dolph, Ellis, Pierre, Kuroda, Bumgardner 29, 30
Overall
Outcome 1–31
TIME PERIOD FOR 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED