Ex Parte GuerraDownload PDFPatent Trials and Appeals BoardMay 31, 201913784335 - (D) (P.T.A.B. May. 31, 2019) Copy Citation 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 2 Appeal2018-008478 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. 3 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 4 Appeal2018-008478 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 5 Appeal2018-008478 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 6 Appeal2018-008478 Application 13/784,335 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. 7 Appeal2018-008478 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 8 Copy with citationCopy as parenthetical citation