Ex Parte Kelly et al

Patent Trial and Appeal Board

Sep 18, 2012

10540706 (P.T.A.B. Sep. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DECLAN PATRICK KELLY and YANG PENG
____________________

Appeal 2010-003286
Application 10/540,706
Technology Center 2400
____________________

Before ERIC S. FRAHM, JASON V. MORGAN, and RAMA ELLURU,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003286
Application 10/540,706

2
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3 and 5, all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b)(1). We affirm.
Appellants’ Disclosed Invention
Appellants disclose an information carrier player having parental
controls (see Spec. 1:5-6) to restrict access to content from an information
carrier and to Internet websites (see Spec. 3:1-3; Spec. 5:8-10).
Exemplary Claims
An understanding of the invention can be derived from a reading of
exemplary claims 1 and 5, which are reproduced below:
1. A method of controlling, from an information carrier
player, user access to information on an information carrier
loaded in the information carrier player, and to a server, said
information carrier being associated with a preset parental
control level (DVD_PCL), and said information carrier player
being associated with a current parental control level selected
from among a set of parental control levels, said method of
controlling comprising the steps of:

receiving the preset parental control level associated with
said information carrier;

comparing said current parental control level and said
preset parental control level;

authorizing or not authorizing access to the information
on said information carrier in dependence on said comparing
step;
Appeal 2010-003286
Application 10/540,706

3

associating a list of server addresses with said parental
control levels; and

restricting the user access to the server addresses in said
list having parental control level lower than or equal to said
current parental control level.

5. A method of controlling, from an information carrier
player, user access to information on an information carrier
loaded on said information carrier player, and to a server, said
information carrier being associated with a preset parental
control level, and said information carrier player being
associated with a current parental control level selected from
among a set of parental control levels, said method of
controlling comprising the steps of:

receiving the preset parental control level associated with
said information carrier;

first comparing said current parental control level and
said preset parental control level;

authorizing or not authorizing access to the information
on said information carrier in dependence on said first
comparing step;

second comparing said current parental control level and
the highest parental control level of said set of parental control
levels; and

authorizing or not authorizing any attempted access to
said server in dependence on said second comparing step.

Appeal 2010-003286
Application 10/540,706

4
The Examiner’s Rejection
The Examiner rejected claims 1-3 and 5 under 35 U.S.C. § 103(a) as
being unpatentable over Lewis (US 6,385,388 B1) in view of Siegel (US
7,305,624 B1).1 Ans. 3-6.
Appellants’ Contentions
Appellants contend (App. Br. 10-16; Reply Br. 2-5) that the Examiner
erred in rejecting claims 1-3 and 5 under 35 U.S.C. § 103(a) over the
combination of Lewis and Siegel for numerous reasons, including: 2
(1) Siegel does not teach or suggest associating a list of server
addresses with said parental control levels, as required by claim 1 (App. Br.
10-14; Reply Br. 2-4);
(2) Siegel does not teach or suggest restricting user access to the
server addresses in the list having parental control level lower than or equal
to said current parental control level, as required by claim 1 (App. Br. 10-14;

1 The rejection’s heading states that all claims are rejected over Lewis in
view of Siegel (Ans. 3). In the body of the rejection of claims 1 and 5, the
Examiner identifies Dimitrova (US 2002/0147782 A1) as providing
additional evidence that it would have been obvious to an artisan of ordinary
skill to combine the teachings and suggestions of Lewis and Siegel (Ans. 4,
6). However, we consider the rejection to be under § 103(a) over the
combination of Lewis and Siegel.
2 Appellants only present arguments on the merits with regard to
independent claim 1 (see App. Br. 10-14; Reply Br. 2-4) and independent
claim 5 (see App. Br. 14-15; Reply Br. 4). Appellants argue that dependent
claims 2 and 3 are patentable for the same reasons as claim 1 from which
they depend (see App. Br. 15-16). Thus, separate patentability is not argued
for dependent claims 2 and 3. Therefore, we select claim 1 as representative
of the group of claims 1-3. 37 C.F.R. § 41.37(c)(1)(vii). We treat claim 5 as
argued separately.
Appeal 2010-003286
Application 10/540,706

5
Reply Br. 4); and
(3) Lewis and Siegel, alone or in combination, do not teach or suggest
first comparing said current parental control level and said preset parental
control level, and second comparing said current parental control level and
the highest parental control level, as required by claim 5 (App. Br. 15; Reply
Br. 4).
Issues on Appeal
(1) Did the Examiner err in rejecting claims 1-3 under 35 U.S.C.
§ 103(a) over the combination of Lewis and Siegel because Lewis and
Siegel, as combined, do not teach or suggest:
(a) associating a list of server addresses with parental control
levels, as required by claim 1; and
(b) restricting user access to the server addresses in the list
having parental control level lower than or equal to said current
parental control level, as required by claim 1?
(2) Did the Examiner err in rejecting claim 5 under 35 U.S.C. § 103(a)
over the combination of Lewis and Siegel because Lewis and Siegel, as
combined, do not teach or suggest first comparing said current parental
control level and said preset parental control level, and second comparing
said current parental control level and the highest parental control level, as
required by claim 5?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contention in the Appeal Brief (App. Br. 10-16) and the Reply Brief (Reply
Br. 2-5) that the Examiner has erred.
Appeal 2010-003286
Application 10/540,706

6
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to the Appellants’ Appeal Brief (Ans. 3-
9). We highlight and amplify certain teachings and suggestions of the
references as follows.

Issue (1)(a)Associating a list of server addresses with parental control
levels, as required by claim 1:
Appellants’ arguments (App. Br. 10-14; Reply Br. 2-4) that Siegel
fails to disclose or suggest associating a list of server addresses with parental
control levels is unconvincing. Specifically, we agree with the Examiner
(Ans. 4, 7) that the combination of Lewis and Siegel teaches or suggests
associating a list of server addresses with parental control levels, as required
by claim 1.
Appellants argue that Siegel fails to teach or suggest using parental
controls to limit access to websites because website exclusion and approval
lists are not the same as associating a list of server addresses with parental
control levels, as required by claim 1 (App. Br. 10-14; Reply Br. 2-4).
In this regard, Appellants’ arguments are directed at Siegel,
individually, as opposed to considering the combination of Lewis and
Siegel. It is well settled that, “one cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981)
(quoting In re Young, 403 F.2d 754 (CCPA 1968)). Thus, Appellants’
arguments solely directed at Siegel are ineffective to overcome the rejection
Appeal 2010-003286
Application 10/540,706

7
over the combination of Lewis and Siegel.
The Examiner did not merely rely upon teachings from Siegel to
reject the limitation at issue. Instead, the Examiner relied upon teachings
from both Lewis and Siegel. The Examiner relied upon Lewis for teaching a
set of parental control levels, one of which is associated with the carrier
player (Ans. 3), and the Examiner relied upon Siegel for teaching utilizing
parental controls to limit access to Internet websites (Ans. 4).3
The Examiner pointed out that Lewis teaches or suggests a set of
parental control ratings utilized by the information carrier player (Ans. 3;
Lewis, col. 5, ll. 22-35) to parentally control access to content, and that
Siegel teaches utilizing parental controls to restrict access to Internet
websites (Ans. 4). Specifically, Siegel teaches restricting access to only
approved websites on the white list (Siegel col. 38, ll. 28-29) and allowing
access to all websites except for excluded websites on the black list (Siegel
col. 38, ll. 29-30). The Examiner explains that the websites are server
addresses and are associated with the white list and black list (Ans. 7).
From Siegel’s teaching, as cited by the Examiner, there are three
distinct levels of parental control, from least restrictive to most restrictive:
(1) none at all, in which all sites are permitted; (2) permit all websites except

3 The Examiner also identified Dimitrova as providing additional evidence
of the following: media content comes from a variety of sources including,
notably, DVDs and the Internet, for which parental controls are desirable
(Ans. 4; Dimitrova (¶ [0035]). In the paragraph cited by the Examiner,
Dimitrova teaches not only a parental control system that controls access to
a video input stream that may be from a DVD player or from the Internet,
but also a parental control system that may utilize program information such
as detailing rating information (¶ [0035]).
Appeal 2010-003286
Application 10/540,706

8
unpermitted ones (e.g., black listed ones); and (3) exclude all websites
except for permitted ones (e.g., white listed ones) (Siegel col. 38, ll. 28-30).
Siegel’s teachings applied to Lewis’ teachings yields utilizing the parental
ratings of Lewis (Lewis, col. 5, ll. 22-35) to function as the parental control
levels for parentally controlling access to websites as taught by Siegel
(Siegel col. 38, ll. 23-57).
Therefore, we agree with the Examiner (Ans. 3-4 and 7) that the
combination of Lewis and Siegel teaches or suggests associating a list of
server addresses with parental control levels because Siegel teaches
controlling access to websites by associating the websites with levels of
parental control.
We also agree with the Examiner (Ans. 8-9) that Appellants’
arguments attack Siegel individually because the Appellants’ arguments fail
to discuss primary reference Lewis or the combination of Lewis and Siegel
and the Examiner’s reasoning.
Issue (1)(b) restricting user access to the server addresses in the list
having parental control level lower than or equal to said current parental
control level, as required by claim 1:
Appellants’ arguments (App. Br. 10-14; Reply Br. 4) that Siegel fails
to disclose or suggest restricting user access to the server addresses in the list
having parental control level lower than or equal to said current parental
control level is unconvincing because we agree with the Examiner (Ans. 4,
7, 8). Specifically, we agree that the combination of Lewis and Siegel teach
or suggest restricting user access to the server addresses in the list having
parental control level lower than or equal to said current parental control
Appeal 2010-003286
Application 10/540,706

9
level, as required by claim 1.
Appellants argue that the Siegel fails to teach or suggest restricting
user access to the server addresses in the list having parental control level
lower than or equal to said current parental control level, as required by
claim 1. Appellants contend that the black and white lists are merely lists of
blocked and allowed websites (App. Br. 10-14; Reply Br. 4).
In this regard, Appellants’ arguments are directed at Siegel,
individually, as opposed to considering the combination of Lewis and
Siegel. It is well settled that, “one cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references.” Keller, 642 F.2d at 426. Thus, Appellants’
arguments solely directed at Siegel are ineffective to overcome the rejection
over the combination of Lewis and Siegel.
As discussed supra with regard to Issue (1)(a), the Examiner did not
merely rely upon teachings from Siegel. Instead, in rejecting claim 1, the
Examiner relied upon both Lewis and Siegel. The Examiner relied upon
Lewis for teaching the current parental control level with which the carrier
player is associated (Ans. 3), and upon Siegel for teaching utilizing parental
controls to limit access to Internet websites (Ans. 4).
The rejection at issue is based on a combination of Lewis and Siegel,
which teach known techniques of parental controls for an information carrier
and Internet, respectively and the application of the obviousness principle, a
combination of known techniques which yield predictable results is likely to
be obvious (Ans. 4). KSR International Co. v. Teleflex, Inc., 550 U.S. 398,
428, 415-16 (2007) (holding that the TSM test is too “narrow, rigid [and]
inconsistent with § 103 and our precedents” and that “[t]he combination of
Appeal 2010-003286
Application 10/540,706

10
familiar elements[, especially when there is no change in their respective
functions,] according to known methods is likely to be obvious when it does
not more than yield predictable results.”).
One of ordinary skill in the art would have: (1) known about
providing parental controls for an information carrier player, as taught by
Lewis; (2) known about providing parental controls for access to websites,
as taught by Siegel; (3) appreciated the desirability of providing common
parental controls for DVDs and the Internet; (4) found obvious to combine
known techniques of parental control, for which the functions of providing
parental control to content would not have changed, in such a manner that
the information carrier player and websites are parentally controlled by
parental controls in common; and (4) appreciated, with mere routine skill in
the art, that such combination would yield predictable results of providing
parental control in common for both DVD content and website content (Ans.
4, 7-8).
We, therefore, agree with the Examiner (Ans. 3-4, 8-9) that the
combination of Lewis and Siegel teaches or suggests restricting user access
to the server addresses in the list having parental control level lower than or
equal to said current parental control level, as required by claim 1.
We also agree with the Examiner (Ans. 8-9) that Appellants’
arguments attack Siegel individually, whereas the articulated rejection (see
Ans. 3-6) is over a combination of Lewis and Siegel because Appellants’
arguments do not discuss primary reference Lewis or the combination and
reasoning as explained in the obviousness statement.
Appeal 2010-003286
Application 10/540,706

11
Therefore, we will sustain the rejection of representative claim 1
because the Examiner established the prima facie case of obviousness and
Appellants have not adequately submitted rebuttal evidence.

Issue (2) First comparing said current parental control level and said
preset parental control level, and second comparing said current parental
control level and the highest parental control level, as required by claim 5:
Appellants’ arguments (App. Br. 15; Reply Br. 4) that Lewis and
Siegel fail to disclose or suggest first comparing said current parental control
level and said preset parental control level, and second comparing said
current parental control level and the highest parental control level is
unconvincing because we agree with the Examiner (Ans. 4, 7-8).
Specifically, we agree that Lewis and Siegel, as combined, teach or suggest
first comparing said current parental control level and said preset parental
control level, and second comparing said current parental control level and
the highest parental control level, as required by claim 5.
Appellants’ argument is that this limitation at issue is “nowhere
disclosed or suggested in Lewis and Siegel, alone or in combination” (App.
Br. 15; Reply Br. 4). These arguments appear to be mere conclusory
assertions because they are not accompanied by supporting explanations or
analysis particularly pointing out errors in the Examiner’s reasoning. Such
conclusory assertions do not persuasively rebut the Examiner’s prima facie
case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). However, for purposes of completeness, we shall treat the general
argument presented by Appellants, which is that none of the references teach
or suggest the limitations at issue.
Appeal 2010-003286
Application 10/540,706

12
The Examiner rejected claim 5 (Ans. 5-6), including the limitation at
issue, over a combination of Lewis and Siegel.4 The Examiner relied upon
Lewis (Ans. 5) to teach the first comparison. The Examiner relied upon
Siegel (Ans. 5-6) to teach the second comparison. The Examiner asserted
(Ans. 6), based upon supporting facts, that one of ordinary skill in the art at
the time of the invention would have found obvious to combine two known
techniques of parental control for information carriers and websites in a
manner that would yield predictable results (e.g., providing an expected
level of parental control for media content from respective sources). KSR,
550 U.S. at 415-16.
Lewis teaches or suggests an information carrier player having an
associated parental control, and utilizing that associated parental control to
compare against a preset parental control of the information carrier (Ans. 5;
Lewis, Figs. 10 and 11, col. 7, ll. 21-37, and col. 5, ll. 22-35). In other
words, Lewis teaches or suggests comparing the parental control rating set in
the disc player with the parental rating of the video, and restricting or
permitting access to the video based upon that comparison (e.g., col. 5, ll.
22-35).
Siegel teaches utilizing parental controls for websites (Ans. 6; Siegel
col. 38, ll. 23-57). Siegel specifically teaches the first most restrictive
parental control by way of a white list (col. 38, ll. 28-29) and the second

4 The Examiner also identified Dimitrova (Ans. 6) as providing additional
evidence of the following: known sources of videos, for which parental
controls may be used, include DVDs and the Internet. As discussed supra
fn. 3, Dimitrova also teach utilizing video rating information for the parental
controls (Dimitrova ¶ [0035]).
Appeal 2010-003286
Application 10/540,706

13
most restrictive parental control by way of a black list (col. 38, ll. 29-30).
From Siegel’s teaching, as cited by the Examiner, there are three distinct
levels of parental control, as discussed supra, from least restrictive to most
restrictive: (1) none at all; (2) black list; and (3) white list.
We agree with the Examiner (Ans. 6) that it would have been obvious
to one of ordinary skill in the art in view of the combined teachings and
suggestions of Lewis and Siegel to have appreciated the importance to
parents in providing safer video watching for children from plural sources of
videos through use of parental controls, the desirability to provide parental
control for information carriers and for server addresses for the children, and
that combining two known techniques of parental control in a method of
parentally controlling information carrier and website content would have
yielded predictable results.
Therefore, we will sustain the rejection of claim 5 because the
Examiner established the prima facie case of obviousness and Appellants
have not adequately submitted rebuttal evidence.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1-3 under 35 U.S.C.
§ 103(a) over the combination of Lewis and Siegel because the combination
of Lewis and Siegel teaches or suggests:
(a) associating a list of server addresses with said parental
control levels, as required by claim 1; and
(b) restricting user access to the server addresses in the list
having parental control level lower than or equal to said current
parental control level, as required by claim 1.
Appeal 2010-003286
Application 10/540,706

14
(2) The Examiner did not err in rejecting claim 5 under 35 U.S.C.
§ 103(a) over the combination of Lewis and Siegel because the combination
of Lewis and Siegel teaches or suggests first comparing said current parental
control level and said preset parental control level, and second comparing
said current parental control level and the highest parental control level, as
required by claim 5.
(3) Claims 1-3 and 5 are not patentable.

DECISION
The Examiner's rejection of claims 1-3 and 5 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

msc