Ex Parte McCarthy

Patent Trial and Appeal BoardMar 16, 2016

12857727 (P.T.A.B. Mar. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/857,727 08/17/2010 Bernard Anthony McCarthy III 70336 7590 03/16/2016 SEED INTELLECTUAL PROPERTY LAW GROUP PLLC 701 FIFTH A VENUE SUITE 5400 SEATTLE, WA 98104 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. P2010-04-0l (290110.473) 4535 EXAMINER SHANG, ANNAN Q ART UNIT PAPER NUMBER 2424 MAILDATE DELIVERY MODE 03/16/2016 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 BERNARD ANTHONY MCCARTHY, III Appeal2014-003008 Application 12/857,727 Technology Center 2400 Before JON M. JURGOVAN, ADAM J. PYONIN, and NABEEL U. KHAN, Administrative Patent Judges. KHAN, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 According to Appellants, the real party in interest is EchoStar Technologies L.L.C. App. Br. 2. Appeal2014-003008 Application 12/857,727 THE INVENTION According to the Specification, some television receivers allow users to access content stored on other devices, such as other television receivers, cameras, computers, or websites. Spec. ,-r 1. However, such access is typically provided through various menus of the television receiver that are separate from menus utilized to access broadcast television programs. Id. Such menus are often too difficult to use. Id. Appellants' invention attempts to address this problem by allowing users to remotely access content from other devices utilizing similar techniques as used for selecting locally receivable television programming. Spec. ,-r 10. This is done by use of selection menus that facilitate the selection of broadcast channels, as well as content from external devices. Id. For example, a group of broadcast channels may be assigned channel numbers 1-20 on the menu, while external devices, such as a security camera may be assigned channel 21. Similarly, a personal computer may be accessed by using channel number 22 and content on a remote television receiver (such as a remote DVR) may be accessed by using channel number 23. Spec. ,-r 11. Thus, a user may access the content stored on external devices from within the electronic programming guide by entering a channel number just as the user would to access a broadcast channel. Id. Exemplary independent claim 1 is reproduced below. 1. A method for presenting available content to a user, the method comprising: outputting for display from a television receiver a first content selection menu, the first content selection menu including at least a first content selection item associated with locally accessible content and a second content selection item associated with an external device; 2 Appeal2014-003008 Application 12/857,727 receiving a request, at the television receiver, associated with the second content selection item; outputting for display from the television receiver a second content selection menu, the second content selection menu specifying at least one content item remotely available through the external device; receiving, at the television receiver, a selection of the at least one content item; receiving the selected content item at the television receiver from the external device; and outputting the selected content item from the television receiver for presentation by a presentation device. REFERENCES and REJECTIONS Claims 1-20 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Hoshen (US 2002/0154892 Al, pub. Oct. 24, 2002) and Thomas (US 7,917,933 B2, iss. Mar. 29, 2011). Final Act. 3-7. ANALYSIS I. Claim 1 The Examiner finds Hoshen teaches a content selection menu with locally stored content and with content remotely available through external devices. Final Act. 3 (citing Hoshen Fig. 12, i-fi-f 12-26). The Examiner further finds that Thomas discloses menus with content items associated with locally accessible content and content items with content stored on external devices. Final Act. 4 (citing Thomas, Figs. 1-5B, 7:16-10:1). Appellants argue "the Examiner does not indicate what, if any, of the selectable on-screen menu items within the on-screen menu in Thomas are 3 Appeal2014-003008 Application 12/857,727 supposed to be associated with particular 'locally accessible content' versus a particular 'external device.'" App. Br. 15. Appellants refer to each of the menu selections in Figure 4A of Thomas and argue that the selections are not associated with any particular external device. App. Br. 15-16. Regarding Hoshen, Appellants argue "there is no association in the 'viewable list of titles' of Hoshen of any particular title with any one particular set-top box, let alone an association specifically with locally accessible content on a local set-top box versus an external device." Reply Br. 13-14. We are unpersuaded by Appellants arguments. Instead, we adopt the Examiner's findings of facts and conclusions as set forth in the Answer and in the Action from which this appeal was taken. We offer the following explanation for emphasis. Hoshen discloses storing titles and content in a distributed manner within a cluster of set top boxes. Ho sh en i-f 12. Thus, some subscribers will have titles stored on their set top boxes, while others will not. Id. Hoshen also discloses that each subscriber is provided with a viewable list of titles stored anywhere within the cluster of set top boxes. Id. This viewable list will, therefore, have menu selections that refer to locally stored content (where the title is stored on the subscriber's set top box) and content stored remotely on external devices (where the title is stored on another set top box in the cluster). See Ans. 9-10. The menu selections are therefore associated with locally accessible content and with content stored on an external device. Id. Thomas teaches that when a user selects a menu item associated with an external device, such as the VOD menu item in Figure 4A, a second menu is displayed specifying content remotely available through an external 4 Appeal2014-003008 Application 12/857,727 device (the VOD server). Thomas 8:45-9:2. Thus, we agree with the Examiner that the combination of Hoshen and Thomas teach or suggest the disputed limitations. See Ans. 12. Appellants' argument that the menu items of Hoshen and Thomas are not associated with a particular external device or set top box is unpersuasive. Claims are given their broadest reasonable interpretation and the claim, properly interpreted, does not require an explicit identification of a particular external device with which a menu item is associated. Accordingly, we sustain the Examiner's rejection of claim 1. We also sustain the rejection of dependent claims 2-7 for which Appellants do not make any arguments for separate patentability. See App. Br. 13-16. II. Claim 8 Appellants argue "Thomas does not disclose a 'content selection menu' being output specifying 'at least one content item remotely available through the external device' as recited in claim 8." App. Br. 17. We disagree for the same reasons explained above with respect to claim 1. To the extent Appellants are making additional or different arguments for claim 8 than for claim 1, we find these arguments to be conclusory and without sufficient explanation. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (noting that an argument that merely points out what a claim recites is unpersuasive); accord In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[T]he Board reasonably interpreted Rule 41.37 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"). 5 Appeal2014-003008 Application 12/857,727 Accordingly, we sustain the Examiner's rejection of claim 8. We also sustain the rejection of independent claims 9-13 for which Appellants do not make any arguments for separate patentability. See App. Br. 17. III. Claim 14 Appellants argue [i]ndependent claim 14 recites, in part, a "device selection menu" (emphasis added), which claims 1 and 8 do not recite (and which is not disclosed by Hoshen and Thomas) and the Examiner incorrectly gives the same reasons for rejecting independent claim 14 as independent claim 8. Thus, for at least the foregoing additional reasons, claim 14 is allowable in view of the references relied-upon by the Examiner. App. Br. 17-18. We disagree. Appellants do not provide sufficient explanation, evidence, or reasoning why the term "device selection menu" refers to something different than the content selection menu of claims 1 and 8. Indeed, Appellants identify the same portions of their Specification as corresponding to and describing the "device selection menu" of claim 14 as the "content selection menu" of claim 8. See App. Br. 9-10. Accordingly, we sustain the Examiner's rejection of claim 14. We also sustain the rejection of dependent claims 15-20 for which Appellants do not make any arguments for separate patentability. See App. Br. 17-18. DECISION The Examiner's rejection of claims 1-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended. See 37 C.F.R. Â§ 1.136(a)(l )(iv). 6 Appeal2014-003008 Application 12/857,727 AFFIRivIED 7