Ex Parte Gray et al

Patent Trial and Appeal BoardSep 19, 2012

10611454 (P.T.A.B. Sep. 19, 2012)

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. 10/611,454 06/30/2003 James Harold Gray ATT030075 1616 84326 7590 09/19/2012 AT & T LEGAL DEPARTMENT - Toler ATTN: PATENT DOCKETING ROOM 2A-207 ONE AT & T WAY BEDMINSTER, NJ 07921 EXAMINER INGVOLDSTAD, BENNETT ART UNIT PAPER NUMBER 2427 MAIL DATE DELIVERY MODE 09/19/2012 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 JAMES HAROLD GRAY, THOMAS JEFFERSON BROTHERS, and WILLIAM RANDLOPH MATZ ____________ Appeal 2010-004828 Application 10/611,454 Technology Center 2400 ____________ Before CARLA M. KRIVAK, GREGORY J. GONSALVES, and ANDREW J. DILLON, Administrative Patent Judges. GONSALVES, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004828 Application 10/611,454 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-21 (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The Invention Exemplary Claim 1 follows: 1. A method comprising: determining at a data center whether to inform a user of an interactive television service of alternate content, the user connected with the data center via a network; responsive to determining to inform the user of the alternate content, generating a hot key signal indicating availability of the alternate content; and inserting the hot key signal into a content signal transmitted to the user from the head-end and data center via the network; wherein the determining is independent of any request by the user for the alternate content, but based at least in part on a search for alternate content having subject matter that is related to subject matter of content being viewed by the user when the search is conducted. The Examiner rejected claims 1, 2, 5-9, 12-16, and 19-21 under 35 U.S.C. § 102(e) as being anticipated by Omoigui (U.S. 2005/0086687) (Ans. 3-7). The Examiner rejected claims 3, 4, 10, 11, 17 and 18 under 35 U.S.C. § 103(a) as being unpatentable over Omoigui in view of Agnihotri (U.S. 2003/0163828) (Ans. 7-8). Appeal 2010-004828 Application 10/611,454 3 ISSUE Appellants’ responses to the Examiner’s positions present the following issue: Did the Examiner err in ruling that Omoigui discloses determining whether to inform a user of an alternate content service “based at least in part on a search for alternate content having subject matter that is related to subject matter of content being viewed by the user when the search is conducted,” as recited in independent claim 1 (emphasis added) and as similarly recited in independent claims 8 and 15? ANALYSIS The Examiner found that Omoigui meets the claim limitation emphasized above because it discloses that “[r]ecommended alternate content is based on . . . programs that are currently being viewed by Figures 13-15” (Ans. 11). Appellants argue that the Examiner erred because Omoigui’s Figures 13-15 show that “processing of correlations occur based on collective information -- after the identification of patterns that arise from the analysis of multiple programs” (App. Br. 9). We agree with Appellants. Each of Omoigui’s Figures 13-15 contains data regarding how long certain programs were viewed by a viewer during a past time period, and not which program a viewer is currently viewing, as required by each of independent claims 1, 8, and 15. Accordingly, for these reasons as expressed more fully by Appellants (App. Br. 5-10), we find that the Examiner erred in rejecting independent claims 1, 8, and 15 as well as claims 2, 5-7, 9, 12-14, 16, and 19-21 dependent therefrom as anticipated. We also find that the Examiner erred in rejecting dependent claims 3, 4, 10, 11, 17 and 18 as obvious Appeal 2010-004828 Application 10/611,454 4 because the secondary reference does not teach the limitation from the independent claims that is missing from Omoigui (see Ans. 7-8). DECISION We reverse the Examiner’s decision rejecting claims 1, 2, 5-9, 12-16, and 19-21 as anticipated and claims 3, 4, 10, 11, 17 and 18 as obvious. REVERSED peb