Ex Parte Hey

Patent Trials and Appeals Board

Jan 29, 2019

12700430 - (D) (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/700,430 02/04/2010
70560 7590 01/31/2019
LKGLOBAL (Dish Technologies L.L.C.)
7010 E. COCHISE ROAD
SCOTTSDALE, AZ 85253
FIRST NAMED INVENTOR
Andrew Hey
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.
066.0299 (P2009-l l-16) 7842
EXAMINER
TELAN, MICHAEL R
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
01/31/2019 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):
ipdept@dish.com
dish@lkglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW HEY
Appeal2018-001867
Application 12/700,430 1
Technology Center 2400
Before MICHAEL J. STRAUSS, NABEEL U. KHAN,
and DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 13, 26, and 30-40, which are all the
claims pending in the application. 2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies Echostar Technologies International Incorporation as
the real party in interest. See Appeal Br. 2.
2 Claims 1-12, 14-25, and 27-29 are canceled. See Appeal Br. 36, 37.
Appeal2018-001867
Application 12/700,430
STATEMENT OF THE CASE
Invention
Appellant's invention relates to "providing one or more highlights
of premium multimedia content that may be of interest to a user of a
television system." Spec. ,r 13. 3
Exemplary Claim
Independent claims 13 and 26 are exemplary and are reproduced
below.
13. A television receiver for providing a highlight of a
multimedia program to a user of a television system including a
headend, the television receiver comprising:
a microprocessor; and
a computer-readable storage medium, the computer
readable storage medium storing a computer-executable code
that, when executed by the microprocessor, causes the television
receiver to perform the operations of:
transmitting to the headend at least one of the group
consisting of (i) user preferences for multimedia content and (ii)
information from which the user preferences for multimedia
content can be determined;
in response to transmitting the user preferences or the
information to the headend, receiving from the headend
instructions to collect and store highlights for premium
multimedia programs correlating to the user preferences by
recording selected portions of the premium multimedia programs
specified by the instructions; and
3 Throughout this Decision, we refer to the following documents:
(1) Appellant's Specification, filed February 4, 2010 ("Spec."); (2) the Non-
Final Office Action ("Non-Final Act."), mailed February 1, 2017; (3) the
Appeal Brief filed June 30, 2017 ("Appeal Br."); (4) the Examiner's Answer
("Ans.") mailed November 3, 201 7; and ( 5) the Reply Brief filed December
12, 2017 ("Reply Br.").
2
Appeal2018-001867
Application 12/700,430
after receiving instructions to collect and store the
highlights from the headend, automatically and without requiring
input from the user (i) collecting and storing the highlights in the
computer-readable storage medium and (ii) subsequently
presenting the highlights to the user of the television system.
26. A method for providing highlights of premium
content to a user of a television system including a receiver and
a headend, the premium content comprising pay to watch
programs, the method comprising:
at the headend, obtaining one or more viewing preferences
of the user by receiving information from the receiver indicative
of the viewing preferences or by analyzing the viewing history
of the user to determine the viewing preferences;
at the headend, identifying highlights of premium content
matching the viewing preferences of the user; and
at the headend, transmitting instructions to the receiver to,
automatically and without requiring input from the user, collect
and store the highlights of premium content by recording
specified segments of the premium content for presentation to the
user of the television system.
Appeal Br. 36, 37.
REFERENCES
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Ellis et al. ("Ellis")
Gorbatov et al. ("Gorbatov")
Swix et al. ("Swix")
Kawai et al. ("Kawai")
Schnell et al. ("Schnell")
Whitehead
Subramanian et al.
("Subramanian")
US 2002/0174430 Al
US 2003/0018980 Al
US 2004/0163101 Al
US 2007 /0300253 Al
US 2008/0255994 Al
US 2009/0178071 Al
US 2011/0123174 Al
3
Nov. 21, 2002
Jan.23,2003
Aug. 19, 2004
Dec. 27, 2007
Oct. 16, 2008
July 9, 2009
May 26, 2011
Appeal2018-001867
Application 12/700,430
McClellen et al.
("McClellen")
US 8,424,043 B 1 Apr. 16, 2013
REJECTIONS
Claims 13 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Whitehead and Subramanian. Non-
Final Act. 3-12.
Claims 30, 31, 37, and 38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Whitehead, Subramanian, and
Gorbatov. Non-Final Act. 12-17.
Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Whitehead, Subramanian, and Swix.
Non-Final Act. 17-19.
Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Whitehead, Subramanian, Swix, and
Ellis. Non-Final Act. 19-20.
Claims 35 and 39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Whitehead, Subramanian, and Kawai.
Non-Final Act. 20-22.
Claim 36 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Whitehead, Subramanian, and
McClellen. Non-Final Act. 22-23.
Claim 40 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Whitehead, Subramanian, and Schnell.
Non-Final Act. 23-25.
4
Appeal2018-001867
Application 12/700,430
Our review in this appeal is limited to the above rejections and the
issues raised by Appellant. Arguments not made are waived. See 3 7 C.F .R.
§§ 4I.37(c)(l)(iv).
CONTENTIONS AND ANALYSIS
Rejection Under 35 USC§ 103(a) of Claim 13
Issue: Based on Appellant's arguments, the dispositive issue
presented on appeal is whether the Examiner errs in finding Whitehead
teaches or suggests "after receiving instructions to collect and store the
highlights from the headend, automatically and without requiring input from
the user (i) collecting and storing the highlights in the computer-readable
storage medium and (ii) subsequently presenting the highlights to the user of
the television system," as recited in claim 13.
In interpreting the limitation at issue, the Examiner determines that
the limitation "automatically and without requiring input from the user"
applies only to "(i) collecting and storing the highlights in the computer-
readable storage medium" and not to "(ii) subsequently presenting the
highlights." Specifically, the Examiner determines that
the language of the claim does not clearly indicate the steps for
"collecting and storing the highlights in the computer-readable
storage medium" and "subsequently presenting the highlights to
the user of the television system" both occur "automatically and
without requiring input from the user." As set forth above in the
rejection of the claim, the examiner has construed the language
of the claim such that "automatically and without requiring input
from the user" is associated with the step for "collecting and
storing the highlights in the computer-readable storage medium."
The step for "subsequently presenting the highlights to the user
of the television system" has been construed as being
unassociated with "automatically and without requiring input
5
Appeal2018-001867
Application 12/700,430
from the user." Rather, the examiner has interpreted this
presentation step as merely occurring subsequent to the recited
... (i) collecting and storing.
Ans. 40. Thus, the Examiner interprets the limitation as not requiring the
claimed presenting the highlights to be performed "automatically and
without requiring input from the user."
Appellant argues the Examiner's claim interpretation is unreasonable
in view of Appellant's use of romanettes in the claim:
usage of romanettes as appearing in the final clause of Claim 13
plainly indicates that the qualifier of "automically and without
requiring input from the user" clearly applies to both the
television receiver function prefaced by romanette (i) ( collecting
and storing the highlights in the computer-readable storage
medium) and the television receiver function prefaced by
romanette (ii) (subsequently presenting the highlights to the user
of the television system).
Reply Br. 13.
We find Appellant's argument persuasive because, in view of the
romanettes, which are commonly used to present a list of items, we interpret
the claimed limitation in the conjunctive to require that both the (i)
collecting and storing the highlights in the computer-readable storage
medium and the (ii) "subsequently presenting the highlights to the user of
the television system," be performed "automatically and without requiring
input from the user." The Examiner has not shown that this interpretation is
inconsistent with Appellant's Specification. See Spec. ,r 13.
In view of our claim interpretation, we agree the Examiner has not
established that either Whitehead or Subramanian, alone or in combination,
teach or suggest "after receiving instructions to collect and store the
highlights from the headend, automatically and without requiring input from
6
Appeal2018-001867
Application 12/700,430
the user ... presenting the highlights to the user of the television system," as
recited in claim 13.
Because we agree with at least one of the dispositive arguments
advanced by Appellant for claim 13, we need not reach the merits of
Appellant's other arguments. We, therefore, do not sustain the Examiner's
35 U.S.C. § 103(a) rejection of claim 13. We, likewise, do not sustain the
rejections of dependent claims 37--40, which each depend from claim 13.
Rejection Under 35 USC§ 103(a) of Claim 26
The Examiner relies on the combination of Whitehead and
Subramanian to teach the method recited in independent claim 26. See Non-
Final Act. 8-12; Ans. 41--45.
Appellant argues neither Whitehead nor Subramanian teach "a
television system headend that cooperates with a television system receiver
to support the automatic highlight recording and presentation functionalities
described in Appellant's Application." Appeal Br. 29-30.
We find Appellant's arguments unpersuasive because the Examiner's
findings are supported by a preponderance of the evidence. We refer to, rely
on, and adopt the Examiner's findings and conclusions for claim 26, insofar
as they relate to issues raised in this appeal, as set forth in the Office Action
and Answer. See Non-Final Act; 8-12; Ans. 41--45. Our discussion is
limited to the following points of emphasis.
Appellant argues "the Whitehead references [sic] provides no
indication that server 210 identifies highlights o(premium content matching
the viewing preferences of the user" or "that server 210 transmits
instructions to a television receiver to collect and store the highlights of
7
Appeal2018-001867
Application 12/700,430
premium content by recording specified segments of the premium content for
presentation to the user of the television system." Appeal Br. 30.
We find this argument unpersuasive because the Examiner relies on
Subramanian, rather than Whitehead, to teach the argued limitation.
Specifically, the Examiner finds "Subramanian teaches providing highlights
of premium content to a user, the premium content comprising pay to watch
programs, identifying highlights of premium content matching the viewing
preferences of the user, and collecting and storing the highlights of premium
content by recording specified segments of the premium content" for
presentation to the user. Ans. 43. Appellant's arguments directed to
Whitehead do not address the Examiner's findings from Subramanian.
Next, Appellant argues
the Subramanian reference expressly pertains to the automatic
recording of "sneak peaks" of television programing at the STB
or television receiver level; and, accordingly, also fails to provide
any indication as to the possibility or desirability of transmitting
instructions to a television receiver from a television system
headend (or another remote entity) to collect and store the
highlights of premium content in any manner.
Appeal Br. 30.
We find this argument unpersuasive because the Examiner relies on
Whitehead, rather than Subramanian, to teach transmitting instructions to a
television receiver from a television system headend. Specifically, the
Examiner finds Whitehead's "' server 210 may include a server entity that
may also include IA DVR functionality 250 that may monitor and record a
user's TV viewing habits, based on a user's interaction with STB 220, and
may automatically cause TV programs to be recorded by DVR 245 based on
the user's viewing habits."' Ans. 42 (citing Whitehead 35--40). Appellant's
8
Appeal2018-001867
Application 12/700,430
arguments directed to Subramanian do not address the Examiner's findings
from Whitehead.
We, therefore, agree with the Examiner that Appellant's arguments
unpersuasively attack the findings from Whitehead and Subramanian
individually (see Appeal Br. 41) when the rejection is based on the
combined teachings of the references. 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") ( citation omitted). Appellant's
arguments fail to take into account what the collective teachings of
Whitehead and Subramanian would have suggested to one of ordinary skill
in the art.
For the reasons discussed, Appellant has not shown error in the
Examiner's factual findings or conclusion of obviousness. Accordingly, we
sustain the Examiner's 35 U.S.C. § 103(a) rejection of independent claim 26,
and of dependent claims 30-36, which are not argued separately. See
Appeal Br. 31-33.
DECISION
We affirm the Examiner's decision rejecting claims 26 and 30-36.
We reverse the Examiner's decision rejecting claims 13 and 37--40.
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-IN-PART
9