Ex Parte Gonzalez

Patent Trial and Appeal BoardApr 11, 2013

11064490 (P.T.A.B. Apr. 11, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/064,490 02/24/2005 Carlos Gonzalez 7979 7590 04/11/2013 Carlos Gonzalez P.O. Box 828 Mission, TX 78573 EXAMINER TELAN, MICHAEL R ART UNIT PAPER NUMBER 2427 MAIL DATE DELIVERY MODE 04/11/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CARLOS M. GONZALEZ ____________ Appeal 2010-010270 Application 11/064,490 Technology Center 2400 ____________ Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and JOHN A. EVANS, Administrative Patent Judges. RUGGIERO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 17-19, which are all of the pending claims. Claims 1-16 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed Feb. 3, 2010), the Answer (mailed May Appeal 2010-010270 Application 11/064,490 2 10, 2010), and the Reply Brief (filed May 27, 2010) for the respective details. We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appellant’s Invention Appellant’s invention relates to providing on-demand video in which a selected video is transferred over a broadcast signal to a user platform where it is saved and played under a user’s control. See generally Abstract. Claim 17 is illustrative of the invention and reads as follows: 17. A method of providing on-demand video comprising: receiving a broadcast video signal; said signal comprised of on-demand video data and commands; storing the on-demand video data and commands in a local storage device; said video on-demand commands contains a date and time upon which the video on-demand will be unavailable; displaying on a local display a signal to indicate the end of said video storing; sending to the TV via the video output a signal displaying the current status of the local storage and a list of user commands; receiving a user action to play the on-demand video by actuating a PLAY button located on a remote control or on the local video player, or highlighting a PLAY command on the TV and depressing an ENTER button on the remote control; transferring the on- demand data stored on said storage to a video player; sending a signal to the video player to start playing the on-demand video; sending the output of the video player to the TV via the video output channel. The Examiner’s Rejection The Examiner’s Answer cites the following prior art references: Yap US 2002/0040475 A1 Apr. 4, 2002 Appeal 2010-010270 Application 11/064,490 3 Novak US 2003/0097655 A1 May 22, 2005 (filed Nov. 21, 2001) Claims 17-19, all of the appealed claims, stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Yap in view of Novak. ANALYSIS Appellant argues, with respect to the obviousness rejection of independent claim 17, that the Examiner has not provided a proper basis for the proposed combination of Yap and Novak. Initially, Appellant directs attention to Novak’s disclosure of the use of a “persistent network connection” to establish communication between a user’s set top box (STB) and a verification entity (Abstract). According to Appellant, the use of such a connection indicates that Novak is using a two-way communication scheme which is incompatible with Yap’s one-way broadcast communication scheme (App. Br. 12-13). In a related argument, Appellant, while recognizing that Yap utilizes a broadcast signal to downstream video content information and commands, contends that Novak cannot be relied upon to provide the specifically claimed time stamp commands teaching missing from Yap as proposed by the Examiner (Reply Br. 4-5). In Appellant’s view, the Examiner’s proposed combination is in error since Novak’s two-way persistent network connection cannot be implemented on Yap’s one-way broadcast system (id.). Appellant’s arguments are not persuasive as our interpretation of the disclosures of Yap and Novak coincides with that of the Examiner. In particular, we agree with the Examiner that both Yap and Novak disclose similar bi-directional communication systems that provide video content and Appeal 2010-010270 Application 11/064,490 4 commands downstream to client devices through broadcast communication while enabling separate upstream communication from client devices (Ans. 9). Further, as alluded to by the Examiner, although Appellant’s claims are directed to broadcast communication from a content provider to a user device, the claims are not limited to single direction only communication. Conversely, there is nothing in the claim language which precludes separate upstream paths from a client device to a content provider enabling bi- directional communication as in Yap and Novak. We further agree with the Examiner that Novak discloses the receiving of a signal which receives and stores commands which contain a date and a time at which an on-demand video will become unavailable (Ans. 5). As described by Novak, a time-based command, i.e., a “license,” which will expire at a particular date and time is communicated downstream from broadcast center 110, which includes verification entity 406, and is stored in a user’s local storage device (¶ ¶ [0084], [0093], [0094]). We also find, contrary to Appellant’s contention, that the Examiner’s stated position (Ans. 5 and 9) provides a valid, articulated line of reasoning with a rational underpinning to support the legal conclusion of obviousness for the proposed combination of Yap with Novak (Ans. 5 and 9). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We agree with the Examiner’s determination that the ability to control and limit access to on- demand video data by setting a time period for a user to view the video content as taught by Novak would be recognized by the artisan as an obvious enhancement to the on-demand video broadcast system of Yap. We further find that Yap’s disclosure supports the Examiner’s position by describing the inclusion of “conditional access data” in the downstream data Appeal 2010-010270 Application 11/064,490 5 communicated to a user’s STB, as well as providing a user the option of selecting how long a program should be available before it is erased from storage (¶ ¶ [0306] and [0370). Finally, we are not persuaded by Appellant’s argument that a persistent network connection, i.e., an “always-on” connection such as utilized by Novak, cannot be implemented on a broadcast only system (Reply Br. 5). Aside from the fact that Appellant has provided no evidence to support such contention and, as discussed supra, the claims are not limited to broadcast only communication, we do not interpret the Examiner’s position as suggesting the bodily incorporation of Novak’s time stamping availability command feature into the system of Yap. Rather, it is Novak’s teaching of using time stamping commands to control and limit access to on- demand video that is relied upon as a rationale for the combination with Yap. “It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (noting that the criterion for obviousness is not whether the references can be physically combined, but whether the claimed invention is rendered obvious by the teachings of the prior art as a whole)). Further, it is noteworthy that Novak indicates that a persistent network connection is neither required nor necessary (¶ ¶ [0085] and [0104]). For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 17, as well as the rejection of dependent claims 18 and 19 not separately argued by Appellant, is sustained. Appeal 2010-010270 Application 11/064,490 6 CONCLUSION OF LAW Based on the findings of facts and analysis above, we conclude that the Examiner did not err in rejecting claims 17-19 for obviousness under 35 U.S.C. § 103(a). DECISION The Examiner’s decision rejecting claims 17-19 under 35 U.S.C. § 103(a) is affirmed. 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). AFFIRMED rwk