Ex Parte Goode et al

Patent Trials and Appeals BoardMar 13, 2019

14558429 - (D) (P.T.A.B. Mar. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/558,429 12/02/2014 14333 7590 03/15/2019 Meagher Emanuel Laks Goldberg & Liao, LLP ONE PALMER SQUARE SUITE 325 Princeton, NJ 08542 FIRST NAMED INVENTOR Christopher Goode 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 ATTORNEY DOCKET NO. CONFIRMATION NO. CHTR/ 13 2DIV2 3860 EXAMINER LI,SUSANX ART UNIT PAPER NUMBER 2423 NOTIFICATION DATE DELIVERY MODE 03/15/2019 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): molech@meagheremanuel.com 14333-docket@meagheremanuel.eom tmeagher@meagheremanuel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER GOODE, DONALD F. GORDON, TOBIE LAROCCA, and PHILLIP A. THOMAS Appeal 2018-005681 Application 14/558,429 1 Technology Center 2400 Before DAVID M. KOHUT, ERIC B. CHEN, and JOSEPH LENTIVECH, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), Appellants appeal from the Examiner's decision to reject claims 1-14. We have jurisdiction over the pending claims under 35 U.S.C. Â§ 6(b). We affirm. 1 According to Appellants, the real party in interest is "Charter Communications Operating, LLC." App. Br. 3. Appeal 2018-005681 Application 14/558,429 STATEMENT OF THE CASE Appellants 'Invention Appellants' invention relates to "providing subscription-on-demand (SOD) services." Spec. 1 :28-29. Claim 1, which is exemplary, reads as follows. 1. In an interactive information distribution system containing service provider equipment and subscriber equipment interconnected by a communications network, a method of providing a subscription-on-demand service compnsmg: sending from said service provider equipment to said subscriber equipment a first menu applet; decoding and executing said first menu applet within said subscriber equipment to display a first interactive graphical user interface; selecting, through manipulation of the first interactive graphical user interface, a subscription option; sending a selection signal indicative of said selected subscription option from said subscriber equipment to said service provider equipment; determining, within said service provider equipment, if a subscriber associated with said subscriber equipment is a current subscriber to said selected subscription option identified by said selection signal; if the subscriber is a current subscriber, sending from said service provider equipment to said subscriber equipment a second menu applet; decoding and executing said second menu applet within said subscriber equipment to display a second interactive user 2 Appeal 2018-005681 Application 14/558,429 interface through which the subscriber can select a subscription program for viewing; if the subscriber is not a current subscriber, sending from said service provider equipment to said subscriber equipment a third menu applet; and decoding and executing said third menu applet within said subscriber equipment to display a third interactive user interface through which the subscriber can become a subscriber to the selected subscription option. REFERENCES 2 The Examiner relies on the following prior art in rejecting the claims: Howe us 5,818,438 Oct. 6, 1998 Knudson us 6,016,141 Jan. 18,2000 Hendricks US 6,181,335 Bl Jan.30,2001 Ellis US 7,185,355 Bl Feb.27,2007 REJECTIONS Claims 1-3, 6, 8-10, and 13 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Hendricks and Howe. Final Act. 7-13. Claims 4, 5, 11, and 12 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Hendricks, Howe, and Ellis. Final Act. 13-14. Claims 7 and 14 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Hendricks, Howe, and Knudson. Final Act. 14--15. 2 All citations herein to these references are by reference to the first named inventor only. 3 Appeal 2018-005681 Application 14/558,429 ANALYSIS Independent Claims 1 and 8 Claims 1 and 8 are the only independent claims. Appellants do not argue these claims separately. App. Br. 15-24. We select claim 1 as representative. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Claim 8 accordingly stands or falls with claim 1. Id. Appellants contend the combination of Hendricks and Howe does not teach or suggest "selecting, through manipulation of the first interactive graphical user interface, a subscription option," as recited in Claim 1. App. Br. 15-18. Appellants argue "Hendricks does not disclose subscription on demand features, much less a framework of a system for providing such features." App. Br. 15 (emphasis omitted). Appellants further argue Hendricks does not teach the claimed "selecting ... a subscription option" because Hendrick's menus do not permit the viewer to select a package of programming (e.g., a package of movies). App. Br. 15-18. We are unpersuaded for the following reasons. First, Appellants contend the claimed "selecting ... a subscription option" must be construed as selecting a package of programming because the claim preamble describes the method as "providing a [SOD] service" and the Specification defines the SOD service as a subscription to a package of programs. Id. at 16 (quoting Spec. 4, 1. 34--5, 1. 8; 6, 11. 25-30). We agree with Appellants inasmuch the Specification defines the SOD service as a subscription to a package of programs. Spec. 6, 11. 25-30; see also id. at 4, 1. 34--5, 1. 8. ("[A] consumer is capable of ... subscribing to packages of on demand programming, i.e., SOD services."). 4 Appeal 2018-005681 Application 14/558,429 However, we also agree with the Examiner that the description of the method as "providing a [SOD] service" is non-limiting because it is recited by the claim preamble and lacks a clear tie to the claimed steps (including to the claimed "selecting ... a subscription option"). Final Act. 3--4; Ans. 15. The Examiner therefore, finds "providing a [SOD] service" describes merely an intended use of the method. 3 Ans. 15. Appellants do not show "providing a [SOD] service" is rather, if defined as above, more than an intended use of the method and claimed "selecting ... a subscription option" ( e.g., is rather a part-and-parcel feature of the invention and claimed "selecting ... a subscription option"). 4 Thus, Appellants show only that "providing a [SOD] service" is an objective of the invention. Spec. 4, 11. 4---6. Though an invention's objective can be probative for a claim interpretation, the at-hand claim steps are not even directed to the above objective. The claim steps are rather directed to a 3 Accord Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) ("[When] the preamble offers no distinct definition of any of the claimed invention's limitations, but rather merely states ... the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation."). 4 See Boehringer Ingelheim Vetmedica, Inc. v. Schering Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) ("[P]reamble language will limit the claim if it recites ... the essence of the invention without which performance of the recited steps is nothing but an academic exercise[-if it recites] ... the raison d'etre of the claimed method itself." (citation omitted)); Griffin v. Bertina, 285 F.3d 1029, 1033 (Fed. Cir. 2002) ("Diagnosis is thus the essence of this invention; its appearance ... gives 'life and meaning' to the manipulative steps." (citation omitted)). 5 Appeal 2018-005681 Application 14/558,429 second objective of simplifying a set top terminal (STT) by sending/storing menus from the headend to the STT only when needed. Id. at 4, 11. 7-11; 20, 11. 3-14. "[P]roviding a [SOD] service" is, therefore, correctly construed as merely a contemplated (not required) SOD use for the claimed sending/storing of menus as needed. 5 Second, Appellants contend the claimed "selecting ... a subscription option" must be construed as an option to select a package of programs because the Specification discloses a "select subscription option" step (360) that selects an SOD package of programs. App. Br. 16. We agree with Appellants inasmuch the Specification thereby shows the claimed "subscription option" can be an option to select a package of programs. However, the Specification also supports the Examiner's finding (Ans. 15) that the claimed "subscription option" can be an option to select a movie from a list of movies. See Spec. 3, 11. 32-34 ("' [S]ubscription' as used in the prior art refers to the capability of selecting from a list a single unit of content such as a movie or video."). In the absence of a clear disclaimer, which is not shown here, we do not read the illustrative "select subscription option" step (360) into the claimed "selecting ... a subscription."6 See Spec. 14, 11. 7-25 ("FIGS. [3A---C] depict ... an 5 See Phillips v. AWH Corp., 415 F.3d 1303, 1326-27 (Fed. Cir. 2005) ("The fact that the written description ... sets forth multiple objectives to be served by the baffles recited in the claims confirms that the term 'baffles' should not be read restrictively to require that the baffles in each case serve all of the recited functions."). 6 See Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 1376 (Fed. Cir. 2017) ("[P]articular embodiments appearing in the written description will not be used to limit claim language that has broader 6 Appeal 2018-005681 Application 14/558,429 illustrative implementation of the SOD service 300."). Instead, we construe the claimed "selecting ... a subscription" as encompassing at least all meanings of "subscription" presented by the Specification (i.e., the Appellants' and Examiner's meanings). 7 Accordingly, we agree with the Examiner that the broadest reasonable interpretation of "subscription option," consistent with Appellants' Specification, includes Hendricks' teaching of a selection of a movie. Ans. 16 ( citing Hendricks Figs. 14, 16; 31 :33---66; 32:24--35). Third, Appellants contend the claimed "selecting ... a subscription option" (from a first menu) and "select a subscription program for viewing" (from a second menu) are different steps and, accordingly, cannot both be interpreted as a selection performed to rent a movie; i.e., the claimed "selecting ... a subscription option" cannot select a program (movie) because the claimed "select a subscription program for viewing" also does so. App. Br. 17-18. Appellants are overstating the doctrine of claim differentiation ( construing different scopes for different claim terms and effect."); SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment." ( citation omitted)). 7 In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) ("[The Board] must apply the broadest reasonable meaning to the claim language, taking into account any definitions presented in the [ S Jpecification." ( citations omitted)). 7 Appeal 2018-005681 Application 14/558,429 phrases). The Examiner need only apply different meanings to these different claim steps, and does so here by reading them on different selections of respective menus (Hendricks' Figures 16 and 20c). 8 The Examiner finds Hendricks' cable television (CATV) menus of Figures 16, 20c, 1 7 respectively teach the claimed first, second, and third menus. Final Act. 7-9. We agree with the Examiner for the following three respective reasons. First, Figure 16' s hit movie menu permits the viewer to select the CATV "subscription option" ( claim 1) of renting a movie by clicking a respective movie title icon (e.g., Terminator 4). Final Act. 4, 8; Ans. 4--5, 15-16; Hendricks col. 3, 1. 14; col. 32, 11. 15-34. Second, if the viewer "is a current subscriber" ( claim 1) to this option (i.e., has already been charged for the movie), then the headend instructs the set top terminal (STT) to open Figure 20c's hit movie reentry menu, whereby the viewer can select a "subscription program for viewing" ( claim 1) by clicking a 'go' icon (under a notice of the prior charge) that starts the movie. Final Act. 5, 8; Ans. 5---6, 16; Hendricks col. 3, 1. 23; col. 35, 11. 10-15. Third, if the viewer "is not a current subscriber" ( claim 1) to this option (i.e., has not already been charged for the movie), then the headend instructs the STT to open Figure 17 's movie description menu, whereby the viewer can "become a subscriber to the selected subscription option" ( claim 1) by clicking a respective 'order' icon that agrees to the movie rental charge. Final Act. 9; Ans. 6; Hendricks col. 3, 1. 15; col. 33, 11. 41---60. 8 See e.g., Applied Med. Res. Corv. US. Surgical Corp., 448 F.3d 1324, 1333 n. 3 (Fed. Cir. 2006) ("[T]he use of two terms in a claim requires that they connote different meanings, not that they necessarily refer to two different structures." ( citation omitted)). 8 Appeal 2018-005681 Application 14/558,429 Appellants further contend the combination of Hendricks and Howe does not suggest the claimed sending of menu applets from a headend to the subscriber equipment, as recited in claim 1. App. Br. 19--24. We are unpersuaded for the following reasons. First, Appellants argue Hendricks' headend does not send menu applets to the STT in response to the user selecting a menu option. App. Br. 19 ("[T]he relevant software associated with the program menu system of Hendricks is embedded within the set top terminal itself [ and t ]here is simply no signaling ... [ to the] provider equipment for the purpose of implementing the program menu system."). Appellants are not addressing the Examiner's reliance on Hendricks and Howe in combination. 9 The Examiner relies on Hendricks for teaching sending menus as claimed (operating as claimed) from a headend to a STT and relies on Howe for teaching sending menus from a headend to a STT in response to menu selections. Final Act. 11-12; Ans. 17; see also Hendricks col. 8, 1. 65- col. 9, 1. 27; Howe col. 1, 11. 31-37; col. 8, 11. 24--27; col. 12, 11. 57- 60. Based on these findings, the Examiner concludes the combination of Hendricks and Howe teaches or suggests the disputed limitations. Final Act. 11-12; Ans. 17. Appellants' arguments do not persuasively address the combined teachings of the references and, therefore, are unpersuasive of error. 9 See In re Merck Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references."). 9 Appeal 2018-005681 Application 14/558,429 Second, Appellants argue neither Hendricks' menu templates nor Howe's menu scripts are menu "applets." App. Br. 23-24. Appellants do not, however, show those of ordinary skill in the art would have interpreted an "applet" as distinguishing over downloaded templates and scripts. Our review of an oft-referenced technical dictionary presents no distinction. See Microsoft Computer Dictionary 31 (5th ed. 2002) ("applet n. A program that can be downloaded over the Internet and executed on the recipient's machine."); id. at 467 ("script n. A program consisting of a set of instructions to an application or a utility program."). Accordingly, we agree with the Examiner that Howe's program or application received by the set top box from the video service provider teaches or suggests an "applet." Ans. 17 ( citing Howe 5: 1--4 ). For the foregoing reasons, we are not persuaded the Examiner erred in rejecting claim 1. Accordingly, we sustain the rejection of claim 1 and independent claim 8 falling therewith. Dependent Claims 2-7 and 9-14 Remaining claims 2-7 and 9-14 depend from claims 1 and 8. As Appellants do not claim 2-7 and 9-14 separately with particularity (App. Br. 16-24), we sustain their rejections for the reasons presented above with regard to claim 1. 10 Appeal 2018-005681 Application 14/558,429 DECISION The Examiner's decision rejecting claims 1-14 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 11