Ex Parte Guerra

Patent Trials and Appeals Board

May 31, 2019

13784335 - (D) (P.T.A.B. May. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/784,335 03/04/2013
26479 7590
STRAUB & POKOTYLO
788 Shrewsbury A venue
TINTON FALLS, NJ 07724
05/31/2019
FIRST NAMED INVENTOR
Justin R. Guerra
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.
TW-70 (TWC 12-42) 3153
EXAMINER
HUYNH, AN SON PHI
ART UNIT PAPER NUMBER
2426
MAIL DATE DELIVERY MODE
05/31/2019 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 JUSTIN R. GUERRA
Appeal2018-008478
Application 13/784,335 1
Technology Center 2400
Before ALLEN R. MacDONALD, MICHAEL J. ENGLE, and
IFTIKHAR AHMED, Administrative Patent Judges.
AHMED, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Technology
The application relates generally to "content delivery, e.g., streaming
of on demand or pay per view content, to devices which are part of a home
network," and enforcing device-specific limits on content delivery.
Spec. ,r 1.
1 According to Appellant, the real party in interest is Time Warner Cable
Enterprises LLC. App. Br. 3.
Appeal2018-008478
Application 13/784,335
Illustrative Claim
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A method of controlling content streaming on a home
network, the method comprising:
receiving at a home network interface of a home network
gateway, located at a customer premise, a first video on
demand service request message from a first device
coupled to the home network, said first video on demand
service request message including a first source identifier
identifying said first device as the source of said first
video on demand service request message and a first
content identifier identifying content requested by said
first video on demand service request message, said home
network gateway including, in addition to said home
network interface, a second communication network
interface that couples said home network gateway to an
external communications network;
storing a portion of said first video on demand service
request message including said first source identifier and
said first content identifier in memory used for storing
video on demand service request message information,
said memory including, for individual request messages
which request content, a request message source identifier
and an identifier of the requested content, said memory
being in said home network gateway;
receiving, at said home network interface of said home
network gateway, a second message including a second
source identifier identifying the source of said second
message; and
operating a processor at the home network gateway to
determine, based on whether said first source identifier
stored in said memory matches said second source
identifier included in the second received message,
whether to provide said content that was requested by said
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Application 13/784,335
first video on demand service request message to a sender
of said second message.
Rejections2
Claims 1-20 stand rejected under 35 U.S.C. § I03(a) as obvious over
the combination of Drummond (US 2011/0078717 Al; Mar. 31, 2011),
Rebaud (US 2004/0261093 Al; Dec. 23, 2004), and Cockrell (US
2008/0117922 Al; May 22, 2008). Final Act. 11.
ISSUE
Did the Examiner err in finding that Drummond teaches or suggests a
"first video on demand service request message," as recited in claim 1?
ANALYSIS
Independent claim 1 recites a "first video on demand service request
message" that is received at "a home network gateway, located at a customer
premise" from "a first device coupled to the home network." Further, the
message includes "a first source identifier identifying said first device as the
source of said first video on demand service request message and a first
content identifier identifying content requested." The Examiner relies on
Drummond and its incorporated references for disclosure of this limitation.
Ans. 20. For the items incorporated by reference, the Examiner notes:
U.S[.] patent application Ser. No. 11/317,911 (corresponding to
U.S[.] 2007/0157281 Al - hereafter referred to as Ellis); U.S[.]
10/927,814 (corresponding to U.S[.] 2005/0028208 - hereinafter
after referred to as E208), U.S[.] patent application Ser. No.
09/332,244 (corresponding to U.S[.] 2003/0149988 Al - referred
to as E988); U.S[.] patent application Ser. No. 10/105,128
2 Our decision as to the § 103 rejection of claim 1 is determinative as to the
§ 103 rejections of all the claims. Therefore, except for our ultimate
decision, we do not discuss further herein claims 2-20.
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Appeal2018-008478
Application 13/784,335
(corresponding to U.S[.] 2002/0174430 Al - referred to as
E430), U.S[.] patent application Ser. No. 11/324,202
(corresponding to U.S[.] 2010/0153885 Al - referred to as Yates)
and other documents that are directly or indirectly incorporated
by references in their entireties in Drummond (see Drummond:
paragraphs 0038, 0046, 0049, 0051, 0067, 0072-0073) are
treated as part of the specification of [Drummond].
Ans. 3--4 (citing MPEP § 2163.07(b)). The Examiner therefore considers
the five references as part of the specification of Drummond. See, e.g., id. at
20; Final Act. 6. The Examiner then finds that Drummond and some its
incorporated references disclose a first video on demand service request
message:
Particularly, Drummond and its incorporated reference disclose
a user equipment device, in response to user request, sends a
request with on demand program identifier (title) via local
server and/or distribution facility to request the program to be
recorded or retrieved from the video source ( source such as
address/identifier of Internet, location that stored the requested
video) of the requested program and providing the requested
video to a destination device for view or recording as requested
by the user (Drummond: paragraphs 0067, 0108-0109, 0156-
0157; E281: paragraphs 0133, 0166, 0168, 0170, 0171, 0179,
0185, 0190, 0192, 0204, 0206, 0227; E208: paragraphs 0218-
0220; E988: figure 5). Thus, the limitation of "a first video on
demand service request message including a first source
identifier identifying said first device as the source of said first
video on demand service request message" (interpreted as
recording or viewing request including a source identifier
(address/location) identifying first device (website, capture
device, location) that provide the requested program identifier
(title) as a source of the video on demand request. The limitation
"a first content identifier identifying content requested said first
video on demand request message" is read on program identifier
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Application 13/784,335
(title) identifying content m the request for recording or
viewing).
Ans. 20-21 ( emphases added).
Appellant objects to the Examiner's position that "Drummond ...
along with all the incorporated references should be viewed as a description
of a single system," and further argues that "to the extent that such an
interpretation is to be made, to be coherent, the Examiner needs to rely on a
single element of the 'system' and not take inconsistent positions when
applying the 'combined' reference to the claims." App. Br. 14. According
to Appellant, "the Examiner repeatedly cites multiple figures and multiple
paragraphs often without matching them to the claim language in a way that
allows [Appellant] to identify what message or element the Examiner is
equating to the element recited in the claims." Id.
As for the "first video on demand service request message" limitation,
Appellant contends "it is improper [ for the Examiner] to assert that the
[limitation] should be interpreted as different messages for different parts of
claim 1 or as a different message for the rejection of claim 1 and the
dependent claims which depend there from." Id. Appellant complains that
"[ d]espite multiple requests for clear identification of precisely what element
in the prior art the Examiner was equating to an element in the claim, the
Examiner has repeatedly refused to identify elements using reference
numbers from the applied figures or to identify precisely what individual
message in the applied reference the Examiner is interpreting as the message
in the claim." Id. According to Appellant, "the Examiner leaves it up to
[Appellant] to review at least 7 different figures and more than 3 5
paragraphs found in multiple different references to try and figure out how
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Application 13/784,335
the Examiner is applying the multiple references" to the first limitation of
claim 1. App. Br. 18.
Appellant further argues that to the extent the Examiner relies on a
"request to record'' as meeting the ''first video on demand service request
message" limitation, "[ v ]ideo on demand messages requesting content are
well understood to be different from a message to control recording e.g., of
broadcast content." Reply Br. 8. Moreover, Appellant argues, "the
Examiner is confusing ... a potential source of content with a device which
may request content" when the Examiner equates the first device to be a
"website or capture device location." Id. Appellant points out that the
claimed "first device" is the device "from which the 'first video on demand
service request message' comes." Id.
We agree with Appellant that the Examiner has not sufficiently
explained how Drummond teaches or suggests a "first video on demand
service request message." The Examiner cites numerous paragraphs from
Drummond and multiple other references incorporated by Drummond but
does not explain how each of those disparate disclosures from different
references teaches or suggests a "first video on demand service request
message." Although we agree with the Examiner that a reference may be
incorporated by reference within a host document and treated as part of that
host document, (Final Act. 6), "[t]o incorporate material by reference, the
host document must identify with detailed particularity what specific
material it incorporates and clearly indicate where that material is found in
the various documents." Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365,
1376 (Fed. Cir. 2006) (emphasis added). Here, although Drummond does
incorporate the Examiner's cited references by reference, it does so for
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specific disclosures relating to various aspects of the Drummond invention.
For example, Drummond incorporates by reference U.S. Patent Application
No. 11/317 ,911 (E281) generally for its disclosure of"[ v ]irtual groups of
user equipment and remote access to stored media content." Drummond
,r 3 8. Drummond's incorporation relates to users' ability to "remotely access
the stored media content on their user equipment." Id. ( emphasis added).
The Examiner fails to explain how this incorporation makes any specific
reference to E281 as disclosing video on demand service request messages
that are received at a home network gateway. 3 We are therefore not
persuaded that the Examiner's reliance on the references incorporated within
Drummond for the purposes of disclosing a "first video on demand service
request message" is proper.
Moreover, we agree with Appellant that the Examiner has failed to
identify a specific disclosure in Drummond or any of its incorporated
references that teaches or suggests "first video on demand service request
message." Although the Examiner recognizes "it is improper to cite
multiple references for the same element or feature of claim 1" (Final
Act. 6), the Examiner's reference to a "recording or viewing request
including a source identifier (address/location) identifying first device
(website, capture device, location) that provide[s] the requested program
identifier (title)" (Ans. 20-21) fails to specifically identify which of the
3 Other incorporated references that the Examiner relies on appear entirely
unrelated to the subject matter of claims at issue here. For example, U.S.
Patent Application No. 10/105,128 is incorporated by reference in
Drummond as disclosing "[a]dditional personalized media guidance
application features." Drummond ,r 49.
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Application 13/784,335
twenty cited paragraphs from/our different references discloses each of
these limitations or how those paragraphs fit together.
We also agree with Appellant that to the extent the Examiner relies on
the address of "a website or capture device location" ( e.g., web address of a
broadcaster's website disclosed in Drummond ,r 67) as disclosing "a first
source identifier identifying said first device," the Examiner fails to
sufficiently explain how that disclosure teaches or suggests a device that is
"the source of said first video on demand service request message." That is,
the "source identifier" identifies who requested the video on demand, not
who broadcasted the video. It is, therefore, not clear from the record before
us that Drummond teaches or suggests maintaining or using a "first video on
demand service request message including a first source identifier
identifying said first device as the source of said first video on demand
service request message," as recited in claim 1. The Examiner also does not
rely on Rebaud and Cockrell as meeting this claim limitation.
Accordingly, given the record before us, we do not sustain the
Examiner's rejection of independent claim 1.
DECISION
For the reasons above, we reverse the Examiner's decision rejecting
claims 1-2 0.
REVERSED
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