Ex Parte MacDonald et al

Patent Trial and Appeal Board

Aug 28, 2014

12031393 (P.T.A.B. Aug. 28, 2014)

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.
12/031,393 02/14/2008 J. Andrew MacDonald LCNT/801221 2492
46363 7590 08/28/2014
WALL & TONG, LLP/
ALCATEL-LUCENT USA INC.
25 James Way
Eatontown, NJ 07724
EXAMINER
HOSSAIN, FARZANA E
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
08/28/2014 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 J. ANDREW MACDONALD, JARED D. MCNEILL, and
MARTIN C. BECKWITH
____________

Appeal 2012-001351
Application 12/031,393
Technology Center 2400
____________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–15 and 17–20. App. Br. 3; Ans. 3. Claim 16 is
canceled. App. Br. 23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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PRIOR ART
The Examiner relies upon the following prior art in rejecting the
claims on appeal.
Lawler US 5,758,259 May 26, 1998
Numata US 2002/0035727 A1 Mar. 21, 2002
Ellis US 2005/0028208 A1 Feb. 3, 2005
REJECTIONS
The Examiner rejected claims 19 and 20 under 35 U.S.C. § 112, first
paragraph, as lacking an adequate written description. Ans. 4–5.
The Examiner rejected claims 19 and 20 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Applicants regard as the invention.
Id. at 5–6.
The Examiner rejected claims 1–15 and 17–20 under 35 U.S.C.
§ 103(a) as unpatentable over Lawler, Numata, and Ellis. Id. at 6–18.
ILLUSTRATIVE CLAIM
Illustrative claim 1 is reproduced below.
1. A method, comprising:
obtaining, from a plurality of high bandwidth programming
subscribers, cumulative statistics of recordings initiated by said
subscribers for programming delivered during a period of time;
determining a programming schedule in response to the
obtained statistics; and
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broadcasting contemporaneously programming and electronic
programming guide to constrained bandwidth programming
subscribers according to the programming schedule.

WRITTEN DESCRIPTION REJECTION OF
CLAIMS 19 AND 20
Each of independent claims 19 and 20 recites “a statistics processor”
comprising various means-plus-function structures. The particular structure
at-issue is the “means for contemporaneously broadcasting programming
and electronic programming guide to constrained bandwidth programming
subscribers according to the programming schedule” (claims 19 and 20).
The requirements for a prima facie case and rebuttal of a written
description rejection are summarized by Hyatt v. Dudas, 492 F.3d 1365,
(Fed. Cir. 2007) as follows:
A statement of a prima facie case need not be a full
exposition on every conceivable deficiency of a claim.
[. . .] Rather, its purpose is simply to provide sufficient notice
to the applicant to facilitate his effective submission of
information. Since the applicant is “in the best position to
cheaply provide” information about the purported invention, the
PTO’s authority to shift the burden to obtain this information is
crucial to ensure that the PTO is not “mak[ing] patentability
determinations on insufficient facts and information.”
In the context of the written description requirement, an
adequate prima facie case must therefore sufficiently explain to
the applicant what, in the examiner’s view, is missing from the
written description. . . .
Adequate written description means that, in the
specification, the applicant must “convey with reasonable
clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the claimed invention.”
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When no such description can be found in the specification, the
only thing the PTO can reasonably be expected to do is to point
out its nonexistence.
492 F.3d at 1370 (citations omitted).
The Examiner finds that, though Appellants’ disclosed “statistics
processor determines/develops a broadcast schedule or guide[, . . . ] there is
no disclosure of the statistics processor broadcasting the programming and
the EPG/schedule during the same time period.” Ans. 19; see also Ans. 4–5
(citing Spec. p. 8, ll. 17–25).1
Appellants argue:
The Examiner was unable to articulate a reasonable basis
[for the written description rejection], because the Examiner’s
conclusion is not based on the evidence as a whole. For
example, the Examiner alleges that the specification is silent on
broadcasting[. . . .]
As shown [at page 2, line 20 to page 3, line 6 of the
Specification], “cable television network, a fiber-optic network”
are all means for broadcasting. Without a reasonable basis for
questioning the adequacy of the written description, the
rejection must be withdrawn.
App. Br. 9. And, in the Reply Brief, Appellants add:
As noted in Appellants’ Appeal Brief, and herein
supplementing the discussion, the claims do not require that the
statistics processor perform the broadcasting as the Examiner
seems to suggest. . . .

1 The Answer particularly cites Appellants’ published application (U.S. Pub.
No. 2009/0210918 A1) at paragraphs 15–17 and 23–25, which correspond in
part to the above-cited portion of the originally-filed Specification.
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As can be seen [from claims 19 and 20], the statistics
processor comprises the means for contemporaneously
broadcasting programming as opposed to the statistics
processor performing the broadcasting. When interpreted in
light of the specification [disclosure at page 3, lines 7–17], the
means for contemporaneously broadcasting programming
become apparent.
Reply Br. 2–3.
Appellants’ argument is not persuasive. Contrary to the argument, the
Examiner has established a prima facie case for lack of written description,
particularly by expressly finding that the Specification’s discussions of a
“statistics processor” do not teach the processor as “contemporaneously
broadcasting programming and electronic programming guide [. . .]
according to the programming schedule” (claims 19 and 20). Having
established the prima facie case, the Examiner has shifted the burden of
production.
Appellants have not shown that the Specification conveys a structure
of the statistics processor as “contemporaneously broadcasting programming
and electronic programming guide [. . .] according to the programming
schedule” (claims 19 and 20). Rather, Appellants contend that the claims do
not require the statistics processor to perform such broadcasting (Reply Br.
2; block-quoted above), which is an unreasonable position in light of claims
19 and 20 contrarily reciting that the processor “comprises” the means-plus-
function structure. And, Appellants contend that a disclosed “cable
television network” and “fiber-optic network” are structures known to
perform the broadcasting (App. Br. 9; block-quoted supra 4), which is
immaterial in light of these networks clearly not being comprised by the
statistics processor.
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For the foregoing reasons, we sustain the rejection of claims 19 and
20 under 35 U.S.C. § 112, first paragraph lack of written description support.
INDEFINITENESS REJECTION OF
CLAIMS 19 AND 20

If a specification does not disclose structure for performing the
function/s of a means-plus-function claim limitation, then the claim is
indefinite. Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d
1328, 1331 (Fed. Cir. 2008) (citing In re Donaldson, 16 F.3d 1189, 1195
(Fed.Cir.1994) (en banc)). Furthermore, “computer-implemented invention”
claims reciting means-plus-function structure are indefinite if the
specification discloses merely a general purpose processor for performing
the function(s). Id. at 1333 (“In cases involving a computer-implemented
invention in which the inventor has invoked means-plus-function claiming,
this court has consistently required that the structure disclosed in the
specification be more than simply a general purpose computer or
microprocessor.”). An algorithm for performing the function(s) – i.e.,
transforming the general purpose processor to a special purpose processor –
must be disclosed. See Function Media, L.L.C. v. Google, Inc., 708 F.3d
1310, 1318 (Fed. Cir. 2013) (“When dealing with a special purpose
computer implemented means-plus-function limitation, we require the
specification to disclose the algorithm for performing the function.”
(quotation marks and citations omitted)); Aristocrat, 521 F.3d at 1337-38
(“[A] person of ordinary skill in the art would not recognize the patent as
disclosing any algorithm at all. Accordingly, the means-plus-function
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limitations of claim 1 lacked sufficient disclosure of structure under 35
U.S.C. § 112 ¶ 6 and were therefore indefinite under 35 U.S.C. § 112 ¶ 2.”).
For the foregoing reasons, Appellants’ disclosure in the Specification
(see Spec. 3:7–17; 4:17–19) of merely a general purpose processor that
performs the function recited in claims 19 and 20 does not satisfy the
definiteness requirement because corresponding structure has not been
provided as required by 35 U.S.C. § 112, second paragraph, for
interpretation under 35 U.S.C. § 112, sixth paragraph.
Accordingly, we sustain the rejection of claims 19 and 20 under
35 U.S.C. § 112, second paragraph.
OBVIOUSNESS REJECTION OF
CLAIMS 1–15 AND 17–20
Claims 19 and 20
Appellants correctly argue that, in presenting the obviousness
rejection of claims 19 and 20, the Examiner does not identify structure
described by the Specification as “contemporaneously broadcasting
programming and electronic programming guide . . . according to the
programming schedule” (claims 19 and 20). App. Br. 18–19. “[T]he PTO
may not disregard the structure disclosed in the specification corresponding
to [means-plus-function] language when rendering a patentability
determination.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994).
Accordingly, we do not sustain the obviousness rejection of claims 19
and 20 under 35 U.S.C. § 103(a).
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Claims 1–15, 17, and 18
Appellants address claims 1–15, 17, and 18 collectively. App. Br. 10–
18. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii)
(2008).
As reflected infra, Appellants’ arguments focus on the following two
limitations of claim 1: “obtaining . . . statistics of recordings[;]” and
“broadcasting contemporaneously programming and electronic
programming guide to constrained bandwidth programming subscribers[.]”
The Examiner’s treatment of these features is as follows.
The Examiner finds that Lawler’s cited embodiment obtains viewer
behavior statistics, but does not obtain viewer recording statistics, as is more
particularly claimed. Ans. 6–7. To bridge this deficiency, the Examiner
finds that Numata teaches an obtaining of recording statistics. Id. at 7. And,
the Examiner concludes that “it would have been obvious [. . .] to modify
Lawler to include statistics of recordings . . . , as taught by Numata[,] in
order to determine all programs the user watches[,] even recordings.” Id.
The Examiner finds that Lawler’s cited embodiment broadcasts
programming according to a programming schedule, but does not
contemporaneously broadcast programming and a programming guide to
constrained bandwidth users, as is more particularly claimed. Id. To bridge
this deficiency, the Examiner finds that Ellis teaches contemporaneous
broadcasting of programming and a programming guide to constrained
bandwidth users. Id. And, the Examiner concludes that “it would have been
obvious . . . to modify the combination [of Lawler and Numata] to include
[these] remaining [claim] limitations[,] as taught by Ellis[,] in order to
provide programming to users of any type of device[.]” Id. at 7–8.
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Appellants argue:
[T]o cure Lawler’s deficiencies, the Examiner appeals to
Numata arguing that Numata teaches among others: “statistics
of recordings and broadcasting contemporaneously
programming and electronic programming guide to constrained
bandwidth programming subscribers according to the
programming schedule.” . . .
. . . .
The cited passages [of Numata] do not provide the basis
to support an obviousness rejection because the claimed feature
is fundamentally different than the prior art’s disclosure.
App. Br. 11–12. The argument is not persuasive, for each of two reasons.
First, the argument fails to meaningfully compare the at-issue claim
limitation against the applied prior art. See In re Jung, 637 F.3d 1356,
1363–65 (Fed. Cir. 2011) (affirming because the appellant “merely argued
that the claims differed from [the prior art], and chose not to proffer a
serious explanation of this difference.”); In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (“[T]he Board reasonably interpreted [37 C.F.R.
§ 41.37(c)(1)(vii)] to require more substantive arguments in an appeal brief
than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”). Second, Numata
is not cited as suggesting claim 1’s broadcasting, but rather as suggesting
claim 1’s obtaining of recording statistics. See supra 7–8.
Appellants also argue:
Lawler was conceived (filed) in 1997 designed to operate with a
specific underlying technology, e.g., 1997 processor capability
whereas Numata was conceived (filed) four years later, i.e.,
2001. With capabilities of electronic devices doubling
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approximately every two years . . . , it is doubtful that a piece of
software designed in 2001 could be executed on a processor
built in 1997 with the exact same results as if the same piece of
software were executed on a processor built in 2001. Issues
such as binary compatibility and all sorts of other compatibility
issues arise.
. . . .
. . . Ellis . . . introduces this additional complexity of being
designed for 2004 processors. It is not realistic to expect
software and/or hardware designed for 2004 processors to
operate seamlessly with 1997 processors.
App. Br. 14–15 (omitting footnote to an explanation of Moore’s Law). The
arguments are not persuasive, for each of two reasons. First, the Examiner
does not – and need not – propose a bodily combination of Lawler’s,
Numata’s, and Ellis’ cited features. See In re Keller, 642 F.2d 413, 425
(CCPA 1981) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference[.]”). Second, though albeit based upon Moore’s Law, the
argument constitutes mere speculation. See In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common
experience is just attorney argument and not the kind of factual evidence that
is required to rebut a prima facie case[.]” (citations omitted)).
Appellants also argue:
[T]he Examiner’s supposed motivation for combining
[Lawler’s and Numata’s teachings] has nothing to do with
broadcasting contemporaneously . . . . [N]or does it provide a
motivation for combining Lawler and Numata. This motivation
is deficient because it fails to explain why one of ordinary skill
in the art would be motivated to perform the modifications in
order to achieve such results.
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App. Br. 16. The argument is not persuasive, particularly because Numata is
not cited as suggesting claim 1’s broadcasting. Rather, Numata is cited as
suggesting claim 1’s obtaining of recording statistics. See supra 7–8. Note
also that the rationale for combining Lawler’s and Numata’s teachings is
clearly and reasonably directed to determining all viewing behavior — i.e.,
“all programs the user watches[,] even recordings” (Ans. 7). Consistent
therewith, Numata denotes both “view history” and “recording history” as
useful statistics of viewing behavior. See e.g., Numata ¶ 21.
Appellants also argue:
[T]he Examiner’s supposed motivation for combining [the
Lawler-Numata combination with Ellis’ teachings] has nothing
to do with broadcasting contemporaneously . . . . [N]or does it
provide a motivation for combining Lawler and Numata with
Ellis. . . .
Appellants maintain that the Examiner’s supposed motivation
for combining Lawler and Numata with Ellis . . . is hopelessly
deficient.
App. Br. 17. We agree with Appellants insofar that, though Ellis is cited as
suggesting claim 1’s “broadcasting contemporaneously,” the Examiner’s
rationale for the Lawler-Ellis combination addresses only claim 1’s
“broadcasting . . . to constrained bandwidth programming subscribers[.]”
Nonetheless, Appellants’ argument is not persuasive, for each of two
reasons.
First, the proposed combination implicitly includes Lawler’s cable
television network. Lawler col. 1, ll. 15–20. Appellants acknowledge that a
skilled artisan would understand a cable television network as
contemporaneously broadcasting programming and a programming guide.
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App. Br. 9 (block-quoted supra 4; arguing, to traverse the written
description rejection, that such a network would be understood as structure
for contemporaneously broadcasting programming and a programming
guide).
Second, Ellis’ cited programming guide is broadcasted continuously.
Ellis ¶ 70. We accordingly find that a skilled artisan would view Ellis as
teaching a contemporaneous broadcasting of programming and a
programming guide. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007) (“Rigid preventative rules that deny factfinders recourse to common
sense . . . are neither necessary under our case law nor consistent with it.”).
Appellants also argue:
[E]ven assuming arguendo that Lawler may be held to disclose
“cumulative statistics of preferred programming and viewing
histories,” the Examiner has failed to specifically cite any
portion of Lawler which discloses the claimed feature.”
Further, the relevancy of Lawler’s disclosure is not apparent
relative to the claimed feature: “cumulative statistics of
recordings initiated by said subscribers for programming
delivered by a provider during a period of time.”
Reply Br. 4. We decline to address the argument, for each of two reasons.
First, the Examiner plainly found within the last Office Action
(mailed May 31, 2011) (Office Action) that Lawler teaches “cumulative
statistics of subscriber viewing behavior of programming initiated by said
subscribers for programming delivered during a period of time[.]” Office
Action 7 (citations omitted). Thus, Appellants could have raised the above
argument in the Appeal Brief and did not. Instead, Appellants have
untimely raised the argument in the Reply Brief. See Ex parte Borden,
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93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“Any bases for
asserting error, whether factual or legal, that are not raised in the principal
brief are waived.”).
Second, the argument merely begs the question of whether Lawler’s
cited disclosures — e.g., descriptions of viewer history and preference
correlations (Lawler col. 9, ll. 7–62) — teach or suggest the at-issue claim
limitation. The argument does not, as required, meaningfully compare the
at-issue claim limitation and Lawler’s teachings. See Jung, 637 F.3d at
1363–65; Lovin, 652 F.3d at 1357.
For the foregoing reasons, we sustain the obviousness rejection of
claims 1–15, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over
Lawler, Numata, and Ellis.

DECISION
The Examiner’s decision rejecting claims 1–15 and 17–20 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

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