Ex Parte Donlan et alDownload PDFPatent Trial and Appeal BoardJun 20, 201410287330 (P.T.A.B. Jun. 20, 2014) 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. 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). 2 Appeal 2011-009122 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 3 Appeal 2011-009122 Application 10/287,330 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 4 Appeal 2011-009122 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 5 Appeal 2011-009122 Application 10/287,330 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 6 Appeal 2011-009122 Application 10/287,330 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 .... 7 Appeal 2011-009122 Application 10/287,330 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. 8 Appeal 2011-009122 Application 10/287,330 § 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. 9 Appeal 2011-009122 Application 10/287,330 AFFIRMED tj 10 Copy with citationCopy as parenthetical citation