Ex Parte HURD et al

Patent Trial and Appeal Board

Jan 31, 2017

13441988 (P.T.A.B. Jan. 31, 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.
13/441,988 04/09/2012 DAVID W. HURD CHA920120008US1 5625
(019U)
73479 7590
CRGO LAW
7900 Glades Road
Suite 520
Boca Raton, EL 33434
EXAMINER
CHEN, CAI Y
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID W. HURD, TASSANEE K. SUPAKKUL, MATHEWS
THOMAS, and JULIO WONG
Appeal 2016-003646
Application 13/441,988
Technology Center 2400
Before JOHNNY A. KUMAR, JUSTIN BUSCH, and CATHERINE
SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—20, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-
part.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to digital
content delivery. See generally Spec. 1. Claim 1 is exemplary:
1. A method for controlling immediate content presentation
comprising:
Appeal 2016-003646
Application 13/441,988
selecting a channel programming associated with a
channel, wherein the channel is associated with a programming
broadcasting system;
displaying the channel programming upon a presentation
device;
receiving an immediate content from a content delivery
entity interrupting the presentation of the channel
programming;
automatically determining presentation preferences for
the immediate content with the channel programming, wherein
at least one of the presentation preferences is a time of
presentation; and
simultaneously presenting the channel programming and
the immediate content on the presentation device.
References and Rejections
Claims 1—5, 7—10, 12—16, and 18—20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Allen (US 2004/0078814 Al; Apr. 22,
2004) and Howarter (US 2010/0211972 Al; Aug. 19, 2010).
Claims 6 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Allen, Howarter, and Amsterdam (US 2011/0285542 Al;
Nov. 24, 2011).
Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Allen, Howarter, and Kendall (US 2005/0273809 Al; Dec. 8, 2005).
ANALYSIS
We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
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appeal is taken and (ii) the Answer (regarding claims 1 and 3—9) to the
extent they are consistent with our analysis below.1
On this record, the Examiner did not err in rejecting claim 1.
Appellants contend Allen and Howarter do not collectively teach
“automatically determining presentation preferences for the immediate
content with the channel programming, wherein at least one of the
presentation preferences is a time of presentation', and simultaneously
presenting the channel programming and the immediate content on the
presentation device,” as recited in claim 1 (emphasis added). See App. Br.
10-21; Reply Br. 1—5. In particular, Appellants assert “the specification’s
preference for ‘a time of presentation’ indicates a time that a presentation
begins on a playback device.” App. Br. 14. With respect to Howarter’s
paragraphs 36 and 37, Appellants contend:
The fact that user preferences are acknowledged — yet none of
these preferences indicate that an alert is to be time-shifted
(which is a non-conventional activity for an alert - not known to
exist in prior art) is an indication that no such feature is
contemplated — therefore paragraphs 0036 and 0037 seem to
teach away from the claimed limitation.
App. Br. 19-20 (emphasis added); see also Reply Br. 3, 5.
Appellants have not persuaded us of error.
First, it is well established that during examination, claims are given
their broadest reasonable interpretation consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art, but without importing limitations from the
1 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. §41.41 (b)(2).
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Application 13/441,988
specification. See In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citations omitted); SuperGuide Corp. v. DirecTV Enters.,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Appellants do not contend the
Specification defines the term “a time of presentation,” and we decline to
import exemplary limitations from the Specification into the term.
As a result, Appellants’ arguments are not commensurate with the
scope of the claim, as Appellants have not shown “a time of presentation”
requires “a presentation begins on a playback device” (App. Br. 14) or
“time-shifted” presentation (App. Br. 19).
Further, the Examiner reasonably interprets the claimed “time of
presentation” to encompass Ho waiter’s disclosure of presenting immediately
or “not at any time.” See Ans. 9-10; Howarter || 36—37 (“If the retrieved
user preferences indicate that a user does not prefer to interrupt the current
displayed programming with a broadcast emergency alert system message,
the process terminates. ... if the retrieved user preferences indicate that a
user wants to interrupt a current displayed programming with a broadcast
emergency alert system message, the process may execute one or more
actions based on the retrieved user preferences.”). Appellants’ argument
that “it would be a stretch of the imagination to claim that the choice to not
display an emergency alert at all is synonymous with a particular time of
presentation” (Reply Br. 5) is not commensurate with the scope of the claim,
as Appellants have not shown the claim requires a “particular” time of
presentation. In any event, Appellants do not contend the Examiner’s
mapping “time of presentation” to Howarter’s disclosure of presenting
immediately is incorrect.
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Second, Appellants’ teaching away argument is unpersuasive because
Appellants fail to provide adequate analysis under the case law. Appellants
fail to assert—let alone show—one skilled in the art “would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006).
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claim 1.
We also sustain the Examiner’s rejection of corresponding dependent
claims 3—5, 7, and 9, which Appellants do not separately argue with
substantive contentions.
Separately Argued Claims
Regarding dependent claim 2, Appellants argue Allen and Howarter
do not collectively teach “wherein the automatic determination is performed
based on heuristics,” because Allen does not teach heuristics, and
Howarter’s paragraph 19 does not teach the disputed claim limitation. See
App. Br. 24.
As discussed above, it is well established that during examination,
claims are given their broadest reasonable interpretation consistent with the
specification and should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art, but without importing
limitations from the specification. See Am. Acad. ofSci. Tech Ctr., 367 F.3d
at 1364; SuperGuide Corp., 358 F.3d at 875. Further, the meaning of a
claim term “is the meaning that the term would have to a person of ordinary
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skill in the art in question at the time of the invention, i.e., as of the effective
filing date of the patent application.'1'’ Phillips v. AWH Corp., 415 F.3d
1303, 1313 (Fed. Cir. 2005) (citations omitted) (enbanc) (emphasis added).
We agree with Appellants that the Examiner erred. In this case, the
Specification discusses “heuristically” in paragraphs 36 and 47, but does not
specifically define the term “heuristics.” Consistent with Appellants’
interpretation about the term, a relevant technical dictionary defines
“heuristic” as “[a]n approach or algorithm that leads to a correct solution of
a programming task by nonrigorous or self-learning means. One approach
to programming is first to develop a heuristic and then to improve on it. The
term comes from Greek heuriskein (“to discover, find out”) and is related to
“eureka” (“I have found it”).” Microsoft Computer Dictionary 251 (5th ed.
2002). That definition of “heuristics” is consistent with the Specification’s
description of the term. See Spec. [0036], [0047] (discussing “settings 328
can be heuristically determined” and “marketing analysis can be leveraged
to heuristically determine how news data 424 will be conveyed to a
viewer”).
The above definition is more persuasive evidence than the undated
non-technical dictionary page cited by the Examiner (Ans. 10), which does
not show how one skilled in the art would understand the term at the time of
the invention. Further, we have reviewed the Howarter (Figure 5,
paragraphs 19 and 36) and Allen (Figure 6) portions cited by the Examiner,
and consistent with the interpretation discussed above, one skilled in the art
would understand the cited portions do not discuss “heuristics.” Absent
further explanation from the Examiner, we do not see how the cited prior art
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portions teach “wherein the automatic determination is performed based on
heuristics,” as required by claim 2.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of claim 2.
Claims 10—20 similarly recite “heuristics.” See claims 10—20.
Therefore, for similar reasons, we reverse the Examiner’s rejection of claims
10-20.
Regarding dependent claim 6, Appellants argue Amsterdam does not
teach “wherein at least one of the video and the audio of the immediate
content is presented on a different presentation device proximately located to
the presentation device,” because Amsterdam does not teach the claimed
“immediate content.” See App. Br. 25.
Because the Examiner relies on the combination of Allen, Howarter
and Amsterdam to teach claim 6, Appellants cannot establish
nonobviousness by attacking Amsterdam individually. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner finds—and
Appellants do not dispute—Allen teaches the claimed “immediate content.”
See Final Act. 5. Therefore, Amsterdam does not need to teach that claim
element separately.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claim 6.
Regarding dependent claim 8, Appellants argue Allen and Howarter
do not collectively teach “wherein the immediate content is received within
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a sub-channel of the channel,” because Allen does not teach a sub-channel of
the channel, and Howarter’s paragraphs 19, 28, and 30 do not teach the
disputed claim limitation. See App. Br. 25—26.
In response to Appellants’ arguments, the Examiner finds Allen and
Howarter collectively teach the disputed claim limitation, including the
recited sub-channel, because Howarter teaches “the assignment of the
channel frequency encoded with the EAS message.” Ans. 11. Appellants
fail to critique the additional Howarter portions cited by the Examiner in the
response, and fail to persuasively respond to the Examiner’s further findings.
Therefore, Appellants fail to show error in the Examiner’s findings. See
Baxter Travenol Labs., 952 F.2d at 391.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claim 8.
DECISION
We affirm the Examiner’s decision rejecting claims 1 and 3—9.
We reverse the Examiner’s decision rejecting claims 2 and 10—20.
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
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