Ex Parte Kennedy et al

Patent Trial and Appeal BoardMar 16, 2017

13732321 (P.T.A.B. Mar. 16, 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. 13/732,321 12/31/2012 John T. Kennedy P2011-01-04 (290110.451) 8080 70336 7590 03/17/2017 Seed IP Law Group LLP/EchoStar (290110) 701 FIFTH AVENUE SUITE 5400 SEATTLE, WA 98104 EXAMINER TRINH, TUNG THANH ART UNIT PAPER NUMBER 2427 MAIL DATE DELIVERY MODE 03/17/2017 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 JOHN T. KENNEDY and CHAD R. TERNING Appeal 2016-003658 Application 13/732,321 Technology Center 2400 Before JOSEPH L. DIXON, MATTHEW J. McNEILL, and SCOTT E. BAIN, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-003658 Application 13/732,321 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of claims 1—5 and 8—17. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to an automatic learning channel customized to a particular viewer and method of creating same. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: inputting to a receiver a plurality of video programs associated with preassigned channels, the channels being listed on an electronic programming guide; presenting to a user the electronic programming guide that has the plurality of channel shown thereon and listed adjacent to their respective preassigned channel; recording descriptive data associated with the content of each video program of the plurality of video programs that a user views via the receiver over a selected time period; creating a set of descriptive criteria for the content of programs which the user has viewed over the selected time period; identifying a future video program that is yet to be viewed that has content that falls within the created set of criteria, the future video program having a preassigned channel associated with it; 1 Appellants indicated that EchoStar Technologies L.L.C. is the real party in interest. (App. Br. 1). 2 Appeal 2016-003658 Application 13/732,321 associating the future video program with a second channel that is linked with that user, the second channel being different from the preassigned channel; presenting the future video program on the second channel that is linked to that user on an electronic programming guide, the second channel being different from the preassigned channel for that particular program; identifying two future programs to be presented to the receiver that are yet to be viewed that each have content that falls within the created set of criteria, the two programs being broadcast in a same time slot on different preassigned channels; comparing the descriptive data of the two future programs to the set of descriptive criteria; determining which of the two programs is a closer match to the descriptive data of viewed programs, wherein the step of determining which of the two programs is a closer match to the descriptive data of viewed programs includes: identifying the number of times within the selected time period that the user has viewed different video programs having nearly similar descriptive data with each other; and giving a greater weight to the descriptive data if the user has viewed multiple programs having similar descriptive data; and associating the determined future program of the two programs that is the closer match with the second channel that is linked with the user for that particular time slot. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: 3 Appeal 2016-003658 Application 13/732,321 Matz (Matz ‘096) US 2004/0261096 A1 Dec. 23, 2004 Matz (Matz‘369) US 2005/0120369 A1 June 2, 2005 Harvey et al. US 2009/0259518 A1 Oct. 15,2009 REJECTION The Examiner made the following rejections: Claims 1—5, 8, 9, 11, 12, and 14—17 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Matz ‘369 in view of Matz ‘096. Claims 10 and 13 stand rejected under pre-AI A 35 U.S.C. § 103(a) as being unpatentable over Matz ‘369, Matz ‘096, in view of Harvey. ANALYSIS With respect to independent claims 1, 14, and 16, Appellants present similar arguments to each of the claims. (App. Br. 13—14). We find independent claims 1, 14, and 16 contain similar limitations, and we address independent claim 1 as the illustrative claim for the group. With respect to independent claim 1, Appellants contend: One example embodiment described in the Application is directed to providing a customized virtual channel to a user based on their past viewing habits. For example, future programs to be on the virtual channel are selected based on identifying the number of times the user has viewed similar programs and giving greater weight to selecting programs similar to those to be on the virtual channel. (App. Br. 10). Specifically, with respect to independent claim 1, Appellants contend that the Examiner has not provided a factual finding or reasoned conclusion of obviousness of the claim limitations: 4 Appeal 2016-003658 Application 13/732,321 identifying the number of times within the selected time period that the user has viewed different video programs having nearly similar descriptive data with each other; and giving a greater weight to the descriptive data if the user has viewed multiple programs having similar descriptive data. (App. Br. 11). Appellants provide arguments to the multiple positions that the Examiner attempts to address the claim limitation. (App. Br. 11—13). We agree with Appellants that the Examiner has not shown a teaching or suggestion in either the Matz ‘369 or Matz ‘096 reference of “identifying the number of times . . .” and “giving a greater weight. . . .” The Examiner implies that Appellants’ Specification does not use or define the claim term “number of times.” (Ans. 3—5). We find the Examiner’s finding to be unpersuasive because the Examiner has not made a rejection based upon written description or enablement. Furthermore, we find the Examiner has not set forth a clear statement of a broadest reasonable interpretation such that the disclosures of either reference would teach or suggest the claimed invention as interpreted. “In the patentability context, claims are to be given their broadest reasonable interpretations . . . limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to a term a unique definition that is different from 5 Appeal 2016-003658 Application 13/732,321 its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description.”). Absent an express intent to impart a novel meaning to a claim term, the words take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003). From our review of Appellants’ Specification flflf 45—54) and the originally filed claims, we find the Examiner’s interpretation of the claim language to be unreasonable. Moreover, we find the Examiner’s reliance upon Appellants’ Specification to be unpersuasive to support the Examiner’s proffered claim interpretation and application of the prior art teachings of the Matz ‘096 reference. (Ans. 3 4). The Examiner’s response to Appellants’ contentions merely repeats the Appellant’s contentions and provides a general conclusion of unpatentability. (Ans. 4—5). Thus, the Examiner’s finding that the Matz ‘096 reference teaches or suggests the disputed limitation of claim 1 is in error because it is not supported by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (Examiner’s burden of proving non-patentability is by a preponderance of the evidence); see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.”). Consequently, we find the Examiner’s factual findings to be insufficient to support the proffered conclusion of obviousness of illustrative claim 1. 6 Appeal 2016-003658 Application 13/732,321 With respect to independent claims 14 and 16 and their respective dependent claims, these claims contain commensurate claim limitations, and the Examiner has not remedied the deficiency in the grounds of the rejection. Therefore, we cannot sustain the rejection for the reasons discussed above.With respect to dependent claims 10 and 13, the Examiner has not identified how the additional teachings of the Harvey reference remedy the noted deficiency. Consequently, we similarly cannot sustain the rejection of dependent claims 10 and 13 forth the same reasons. CONCLUSION The Examiner erred in rejecting claims 1—5 and 8—17 based upon obviousness under 35 U.S.C. § 103. DECISION For the above reasons, we cannot sustain the Examiner’s obviousness rejections of claims 1—5 and 8—17 under 35 U.S.C. § 103. REVERSED 7