Ex Parte Hannum et al

Patent Trial and Appeal BoardJan 17, 2017

14257392 (P.T.A.B. Jan. 17, 2017)

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. 14/257,392 04/21/2014 Sandi Hannum 007412.02711 1001 71867 7590 01/19/2017 BANNER & WITCOFF , LTD ATTORNEYS FOR CLIENT NUMBER 007412 1100 13th STREET, N.W. SUITE 1200 WASHINGTON, DC 20005-4051 EXAMINER CHIN, RICKY ART UNIT PAPER NUMBER 2423 NOTIFICATION DATE DELIVERY MODE 01/19/2017 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): PTO-71867 @bannerwitcoff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SANDI HANNUM, JAMES R. ALBRECHT, MATT WONG, BRUCE R. BRADLEY, and PETER SHEEDY Appeal 2016-005502 Application 14/257,392 Technology Center 2400 Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and GARTH D. BAER, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 2—21, which constitute all the claims pending in this application. Claim 1 is cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest identified by Appellants is Comcast Cable Communications, LLC. Appeal Br. 2. Appeal 2016-005502 Application 14/257,392 STATEMENT OF THE CASE Introduction Appellants’ described and claimed invention relates generally to “providing [a] video program start over system and method for a video entertainment distribution network.” Abstract.2 Claims 2 and 18 are representative and read as follows (with the disputed limitations emphasized)'. 2. A method, comprising: recording, by a computing device, a video program to create a recorded video program in response to determining that the video program is permitted to be recorded based on information received in conjunction with the video program; transmitting the recorded video program to a particular device from among a plurality of devices configured to play the video program from a beginning; updating an indicator to indicate that at least one of the plurality of devices is accessing the recorded video program; updating the indicator in response to determining that the plurality of devices are no longer accessing the recorded video program; determining whether a runtime of the video program has elapsed; and removing the recorded video program based on the indicator and in response to determining that the runtime has elapsed. 2 Our Decision refers to the Final Office Action (mailed Mar. 13, 2015, “Final Act.”), Appellants’ Appeal Brief (filed Nov. 12, 2015, “App. Br.”) and Reply Brief (filed May 4, 2016, “Reply Br.”), the Examiner’s Answer (mailed Mar. 4, 2016, “Ans.”), and the original Specification (filed Apr. 21, 2014, “Spec.”). 2 Appeal 2016-005502 Application 14/257,392 18. A method, comprising: receiving, by a computing device from a particular device of a plurality of devices, a request to replay a video program from a beginning of the video program; in response to the request, transmitting a stored version of the video program to the particular device and updating an indicator to reflect that the particular device is accessing the stored version; updating the indicator in response to a determination that the plurality of devices are no longer accessing the stored version; and deleting the stored version from memory in response to the indicator indicating that the stored version is not being accessed by the plurality of devices and a determination that a runtime of the video program has elapsed. Appeal Br. 11, 13—14 (Claims App.). Rejections on Appeal Claims 2, 13, and 18 stand rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1, 12, 22, 33, and 34 of U.S. Patent No. 8,707,376.3 Claims 2-4, 7, and 13—14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen et al. (US 2005/0155079 Al; published July 14, 2005) (“Chen”), in view of Gervais et al. (US 2008/0250456 Al; published Oct. 9, 2008) (“Gervais”). Claims 5—6, 8, 11—12, and 15—21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen, in view of Gervais, and 3 Appellants indicate they are not appealing the double-patenting rejection. See Appeal Br. 4, n. 1. Therefore, we summarily sustain the double patenting rejection. 3 Appeal 2016-005502 Application 14/257,392 further in view of Dow et al. (US 2004/0221311 Al; published Nov. 4, 2004) (“Dow”). Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen, in view of Gervais, in further view of Dow, and in further view of Yuen et al. (US 2001/0042246 Al; published Nov. 15, 2001) (“Yuen”). Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen, in view of Gervais, in further view of Dow, and in further view of Sie et al. (US 7,228,559 Bl; issued June 5, 2007) (“Sie”). ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments in the Appeal Brief (see App. Br. 4—10) and the Reply Brief (see Reply Br. 2—6) and are not persuaded the Examiner has erred. Unless otherwise noted, we adopt as our own the findings and reasons set forth by the Examiner in the Office Action from which this appeal is taken (Final Act. 2—14) and in the Examiner’s Answer (Ans. 2—16), and we concur with the conclusions reached by the Examiner. For emphasis, we consider and highlight specific arguments as presented in the Briefs. Rejection of Claims 2—17 under § 103(a) Appellants argue Chen and Gervais, either alone or in combination, fail to teach or suggest all of the claim elements of independent claims 2 and 13. See App. Br. 5. More specifically, Appellants argue Chen discloses deleting a program when its expiration date has passed, and fails to disclose determining whether a runtime of a video program has elapsed and removing a recorded video program in response to determining the runtime has 4 Appeal 2016-005502 Application 14/257,392 elapsed. See id (citing Chen || 29, 47); see also Reply Br. 2—3. Appellants further argue Gervais does not teach removing a recorded video program based on a selection status field and in response to determining a runtime has elapsed because: (a) Gervais discloses replacing program channels rather than removing a recorded video program; and, (b) Gervais does not disclose determining whether a runtime of a program channel has elapsed and replacing the program channel in response to determining the runtime has elapsed. See App. Br. 6; see also Reply Br. 3. We do not find these arguments persuasive. Regarding Chen, we agree with the Examiner that Chen teaches deleting a recorded video program in response to a determination that an expiration date has passed (i.e., a determination a current date exceeds an expiration date). See Ans. 10—11 (citing Chen || 29, 47). We also agree with the Examiner that Chen further teaches determining an expiration date involves determining an air date when the recorded video program originally aired, and setting the expiration date to either the air date or a date subsequent to the air date, which incorporates an availability period and/or grace period. See Ans. 10- 11 (citing Chen || 45, 47). The air date indicates a date and time a runtime of the original broadcast of the video program elapsed. See Chen 145. Thus, we agree with the Examiner that Chen’s deleting a recorded video program in response to a determination that an expiration date has passed teaches or suggests removing the recorded video program in response to determining a runtime of the video program has elapsed. See Final Act. 5. Regarding Gervais, we agree with the Examiner that Gervais teaches replacing content, and replacing content also teaches removing content as replacing content involves removing old content and adding new content in 5 Appeal 2016-005502 Application 14/257,392 its place. See Final Act. 5—6 (citing Gervais 20—23, 30); see also Ans. 12. We also agree with the Examiner that Chen also teaches deleting content. See Ans. 12 (citing Chen 147). We further agree with the Examiner that Appellants’ argument that Gervais fails to teach or suggest determining whether a runtime of a program channel has elapsed is not persuasive of error because the Examiner relied upon Chen for teaching the claimed feature of determining whether a runtime of video program has elapsed. See Ans. 11—12. One cannot show non-obviousness by attacking references individually when the rejection is based on a combination of references. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Thus, we agree with the Examiner that the combination of Chen and Gervais teaches or suggests all of the claim elements of claims 2 and 13. Appellants also argue it would not have been obvious to modify Chen in view of Gervais to arrive at the combination of claimed elements of claims 2 and 13. See Appeal Br. 6. More specifically, Appellants argue the purpose of Gervais is not to remove recorded video programs from memory, but rather to reduce wasted bandwidth, and, thus, one of ordinary skill in the art would not have looked to Gervais to modify Chen’s process of deleting programs. See id', see also Reply Br. 3^4. Appellants further argue there is no teaching or suggestion in either Chen or Gervais to use the selection status field taught in Gervais to control whether a program is deleted. See App. Br. 6—7; see also Reply Br. 4. We also do not find these arguments persuasive. “[A]n implicit motivation to combine” may result from a desire to make a product or process “stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. 6 Appeal 2016-005502 Application 14/257,392 Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). We agree with the Examiner that Chen teaches or suggests determining whether a recorded video program has been selected as part of the process of deleting the recorded video program in response to a determination that an expiration date has passed. See Ans. 13 (citing Chen | 55). We further agree with the Examiner that a person of ordinary skill in the art would have realized that incorporating Gervais’s replacement of old video content with new video content in response to a selection status indicating no devices are accessing the old video content would yield the following benefits: (1) a more efficient utilization of bandwidth via the prevention of bandwidth usage by video content not accessed by any devices as taught by Gervais; and, (2) increased storage memory space via the deletion of the video content as taught by Chen. See Ans. 12—13 (citing Gervais 2, 19; Chen 147). Accordingly, the Examiner provides sufficient articulated reasoning with a rational underpinning for why a person of ordinary skill in the art would have combined the references, including identifying advantages achieved with the combination. See KSR Int’l Co. v. Teleflex Co., 550 U.S. 398, 418 (2007). Thus, we are not persuaded that the Examiner erred in finding the combination of Chen and Gervais teaches or suggests all of the claim elements of claims 2 and 13. Accordingly, we sustain the rejection of claims 2 and 13 under 35 U.S.C. § 103(a), as well as dependent claims 3—12 and 14—17, not argued separately. Rejection of Claims 18—21 under § 103(a) Appellants argue Chen and Gervais, either alone or in combination, fail to teach or suggest all of the claim elements of independent claim 18 for similar reasons as to why Chen and Gervais fail to teach or suggest all of the 7 Appeal 2016-005502 Application 14/257,392 claim elements of independent claims 2 and 13. See Appeal Br. 8. Appellants also argue Dow does not cure the argued deficiencies of Chen and Gervais. See id. Appellants further argue claim 18 is particularly distinguishable over Chen and Gervais because it recites “deleting.” See App. Br. 9; see also Reply Br. 4—5. We do not find these arguments persuasive. Appellants rely on their arguments regarding claims 2 and 13, but we do not find them persuasive for the reasons discussed above. Further, Appellants do not persuasively explain how “deleting” is different from “removing.” Even further, as found by the Examiner, Chen explicitly teaches deleting a recorded video program. See Ans. 14 (citing Chen 147). Thus, we are not persuaded the Examiner erred in finding the combination of Chen, Gervais, and Dow teaches or suggests all of the claim elements of claim 18. Accordingly, we sustain the rejection of claim 18 under 35 U.S.C. § 103(a), as well as dependent claims 19-21, not argued separately. DECISION We affirm the Examiner’s rejection of claims 2, 13, and 18 on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1, 12, 22, 33, and 34 ofU.S. Patent No. 8,707,376. We affirm the Examiner’s rejection of claims 2—21 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 8