Ex Parte Donlan et al

Patent Trial and Appeal Board

Jun 20, 2014

10287330 (P.T.A.B. Jun. 20, 2014)

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.
10/287,330 11/04/2002 Brian Joseph Donlan 007412.00055 4823
71867 7590 06/24/2014
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
ZHONG, JUN FEI
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
06/24/2014 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):
PTO-71867 @bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN JOSEPH DONLAN and
RANDALL G. RUSHE
Appeal 2011-009122
Application 10/287,3301
Technology Center 2400
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3-5, 7, 8, 10-17, 19-25, 27, 28 and 32-36. Appellants
have previously canceled claims 2, 6, 9, 18, 26, and 29-31. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The Real Party in Interest is Comcast Cable Holdings. App. Br. 1.i
Appeal 2011-009122
Application 10/287,330
STATEMENT OF THE CASE2
The Invention
Appellants’ invention “relates generally to a method and apparatus for
managing the provisioning of a telecommunication network and specifically
to a method and apparatus for managing the provisioning of an interactive
television (ITV) network and the associated ITV client devices connected
thereto.” Spec. p. 1,11. 16-19 (“FIELD OF THE INVENTION”).
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added):
1. An apparatus comprising:
a processor configured to cause the apparatus to:
receive a request indicative of an interactive
television (ITV) service requested by an ITV client device,
determine from the request that selected network
components of a television network, a packet data network, and
a client-server computing network are to be provisioned to
provide the requested ITV service to the ITV client device, and
communicate provisioning instructions for
carrying out the request to the selected network components,
via at least one interface adapter, wherein the at least one
interface adapter is configured to identify events that require
Our decision relies upon Appellants’ Appeal Brief (“App. Br.,” filed
Dec. 16, 2010); Reply Brief (“Reply Br.,” filed May 12, 2011); Examiner’s
Answer (“Ans.,” mailed Mar. 16, 2011); Final Office Action (“Final Act.,”
mailed June 8, 2010); and the original Specification (“Spec.,” filed
Nov. 4, 2002).
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Application 10/287,330
mediation and to provide a workflow engine with the request,
wherein the workflow engine is configured to execute the
request and to return results from executing the request to the
at least one interface adapter, and wherein the at least one
interface adapter is configured to transmit the results to the
selected network components for processing.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Holm US 2003/0070181 A1 Apr. 10, 2003
Hendricks et al. US 7,134,131 B1 Nov. 7, 2006
(“Hendricks”)
Rejections on Appeal
1. Claims 1, 3, 4, 7, 8, 10-17, 19-25, 27, 28 and 32 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Hendricks. Ans. 4.
2. Claims 5 and 33-36 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hendricks and Holm. Ans. 17.
ISSUE
Appellants argue (App. Br. 9; Reply Br. 4-5) the Examiner’s rejection
of claims 1, 3, 4, 7, 8, 10-17, 19-25, 27, 28 and 32 under 35 U.S.C. § 102(e)
as being anticipated by Hendricks is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art discloses a
processor configured to, inter alia,
communicate provisioning instructions for carrying out the
request to the selected network components, via at least one
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interface adapter, wherein the at least one interface adapter is
configured to identify events that require mediation and to
provide a workflow engine with the request, wherein the
workflow engine is configured to execute the request and to
return results from executing the request to the at least one
interface adapter, and wherein the at least one interface adapter
is configured to transmit the results to the selected network
components for processing^]
as recited in Claim 1 ?
ANALYSIS
We only consider those arguments actually made by Appellants in
reaching this decision, and we do not consider arguments which Appellants
could have made but chose not to make in the Briefs so that any such
arguments are deemed to be waived. 37 C.F.R. § 41.37(c)(l)(vii).
We disagree with Appellants’ arguments with respect to claim 1, and
we 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 by the Examiner in the Examiner’s Answer in response to
Appellants’ Arguments. However, we highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.
Appellants contend Hendricks fails to disclose a processor configured
to “communicate provisioning instructions for carrying out the request to the
selected network components, via at least one interface adapter, wherein the
at least one interface adapter is configured to identify events that require
mediation and to provide a worhfow engine with the request.'''’ App. Br. 9.
Appellants further contend the Examiner “analogizes entities 244, 246, 268,
232, 272, 276, 278, and 280 to the recited at least one interface adapter,” but
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Application 10/287,330
that this is incorrect because, “[e]ven assuming (without admitting) that such
an analogy is proper, entities 244, 246, 268, 232, 272, 276, 278, and 280 in
Hendricks are merely wires; those entities do not identity events, much less
identify events that require mediation as recited in claim 1Id. In the
Reply Brief, Appellants contend “[i]n Hendricks, receiver 254 does not
identify events that require mediation, much less provide a workflow engine
with the request. Instead, receiver 254 in Hendricks merely receives
upstream data transmissions 246.” Reply Br. 4.
The Examiner finds, and we agree:
Hendricks discloses a system providing pay-per-view services
or subscription programming and to establish a mechanism for
billing subscribers who access the programs. Subscribers may
access the Internet and send a program request to a web site.
An authorization is then forwarded to a billing center and to a
local broadcaster. The billing center debits the subscriber's
account, or prepares a bill. The local broadcaster sends the
authorization to the subscriber. The authorization includes a
program code and a terminal identifier that permits the
subscriber’s television or set top terminal to decrypt and display
the program (see abstract of Hendricks).
Hendricks further discloses the subscribers may send/
perform a video/program request (e.g., order signal/message) to
headend via the Internet (105), telephone line (244), or an
upstream transmission (246) (i.e., different interfaces, and these
different interfaces inherently have the transmitter/receiver
(adapter) in order to establish communication, such as receiver
254; Fig. 6c) (see col. 15, line 62-col. 16, lines 4; col. 22, lines
25-45; Fig. 1, 6c, 9a-9c and 11).
Ans. 19-20 (citing Hendricks) (emphasis added). We find this disclosure in
Hendricks anticipates the recited identification of events that require
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mediation, e.g., pay-per-view services, subscription services, and billing
mechanisms.
Further, we agree with the Examiner’s finding that the different
interfaces identified in Hendricks inherently have an associated transmitter/
receiver or interface adaptor in order to establish communication.
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art
reference. Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325,
1332 (Fed. Cir. 2010). A reference inherently discloses an element of a
claim “if that missing characteristic is necessarily present, or inherent, in the
single anticipating reference.” Schering Corp. v. Geneva Pharms., 339 F.3d
1373, 1377 (Fed. Cir. 2003) (citation omitted) (emphasis added).
“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (citing
Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir.
1991)).
The Examiner has the burden of providing reasonable proof that a
claim limitation is an inherent characteristic of the prior art. In re Best, 562
F.2d 1252, 1254-55 (CCPA 1977); see also Crown Operations Inti, Ltd v.
Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002). The Examiner meets this
“burden of production by ‘adequately explaining the shortcomings it
perceives so that the applicant is properly notified and able to respond.’” In
re Jung, 631 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting Hyatt v. Dudas, 492
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F.3d 1365, 1370 (Fed. Cir. 2007)). The burden of proof then shifts to the
applicant “to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.” Best, 562 F.2d at 1254-55; In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (holding that once the
Examiner established a prima facie case of anticipation, the burden of proof
was properly shifted to the inventor to rebut the finding of inherency).
Where the Examiner establishes a reasonable assertion of inherency
and thereby evinces that a claimed process appears to be identical to a
process disclosed by the prior art and/or that the products claimed by the
applicant and disclosed in the prior art appear to be the same, the burden is
properly shifted to the applicant to show that they are not. See In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254-56
(CCPA 1977).
Thus, we find the burden of production has properly shifted to
Appellants to rebut the Examiner’s finding concerning the inherent nature of
an interface adaptor being associated with various interfaces to effect
communication, including receiver 254 in Hendricks.
However, we note Appellants have not rebutted the Examiner’s
finding of inherency because Appellants merely argue, without presenting
convincing evidence:
In this case, even assuming (without admitting) that receiver
254 of Hendricks could have been analogized to the recited at
least one interface adapter, and network management CPU 260
of Hendricks could have been analogized to the recited
workflow engine, receiver 254 and CPU 260 of Hendricks are
not arranged or configured to operate in the same manner as
recited in claim 1 for at least the reasons discussed ....
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Reply Br. 5.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the disclosure of Hendricks
to anticipate the disputed limitation of claim 1.
In addition, and although not dispositive to our ultimate decision, we
note apparatus claim 1 only positively recites one element, i.e., “a
processor.” The remaining recitations of claim 1 are directed to specifying
various functionality carried out by the recited processor with respect to
other components which do not form part of the claimed invention, such as
“an ITV client device,” “selected network components of a television
network,” “a packet data network,” “a client-server computing network,” “at
least one interface adapter,” and “a workflow engine.” There is no recitation
in claim 1 of any of these components being operatively coupled to the
recited processor, which calls into question the precise structure being
•3
claimed in apparatus claim 1.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art. Therefore, we sustain the
Examiner’s anticipation rejection of independent claim 1. As Appellants
have not provided separate arguments with respect to independent claims 15,
22, 27 and 32,or dependent claims 3, 4, 7, 8, 10-14, 16, 17, 19-21, 23-25 and
28 (App. Br. 9-11), rejected on the same basis as claim 1, we similarly
sustain the Examiner’s rejection of these claims under 35 U.S.C. § 102(e).
•3
In the event of further prosecution, we invite the Examiner’s attention to
claim 1 to determine whether this claim complies with the requirements of
35 U.S.C. § 112, second paragraph.
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§ 103(a) Rejection of Claims 5 and 33-36 over Hendricks and Holm
In view of the lack of any substantive or separate arguments directed
to the unpatentability rejection of claims 5 and 33-36 under § 103 (see App.
Br. 11-12),4 we sustain the Examiner’s unpatentability rejection of these
claims, as they fall with their respective independent claims. When
Appellants do 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); In re Sernaker, 702 F.2d 989, 991 (Fed.
Cir. 1983). Accordingly, we sustain the rejection of claims 5 and 33-36.
CONCFUSIONS
(1) The Examiner did not err with respect to the anticipation
rejection of claims 1, 3, 4, 7, 8, 10-17, 19-25, 27, 28 and 32 under 35 U.S.C.
§ 102(e) over Hendricks, and we sustain the rejection.
(2) The Examiner did not err with respect to the unpatentability
rejection of claims 5 and 33-36 under 35 U.S.C. § 103(a) over the
combination of Hendricks and Holm, and we sustain the rejection.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 3-5, 7, 8, 10-
17, 19-25,27,28, and 32-36.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2011).
4 Appellants generally allege the various dependent claims rejected under
§103 are allowable on the basis of their dependency on their respective
independent claims. App. Br. 11-12.
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AFFIRMED
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