Ex Parte Meijer

Patent Trial and Appeal Board

Apr 28, 2016

12209853 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/209,853 09/12/2008
70560 7590 05/02/2016
INGRASSIA FISHER & LORENZ, P.C. (EchoStar)
7010 E. COCHISE ROAD
SCOTTSDALE, AZ 85253
Johannes Meijer
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.
066.0277 (P2008-06-0013) 5344
EXAMINER
LANGHNOJA, KUNAL N
ART UNIT PAPER NUMBER
2427
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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@ifllaw.com
IPDEPT@echostar.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHANNES MEIJER
Appeal2014-003492
Application 12/209,853
Technology Center 2400
Before HUNG H. BUI, JOHN F. HORVATH, and AMBER L. HAGY,
Administrative Patent Judges.
HORVATH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 1-19, 22, and 25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-003492
Application 12/209,853
SUMMARY OF THE INVENTION
The invention is directed to controlling a set-top box or a digital video
recorder using a mobile device. Spec. i-f 1.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for providing a program reminder to a user, the
method comprising:
receiving an indication from the user of interest in a
program;
receiving an input indicating that the user is away from the
set-top box and that the program reminder is to be received on a
mobile device;
generating, in a set-top box, the program reminder when
the media program is available; and
only transmitting the program reminder from the set top
box to the mobile device for display to the user in response to the
input indicating that the user is away from the set-top box and
that the program reminder is to be received on the mobile device,
wherein the input is provided from a switch on the set top box
being configured in an away position.
Chen
Fritsch
Groff
Lowcock
Khurana
REFERENCES
US 6,553,100 Bl
US 2005/0144640 Al
US 2006/0085832 Al
US 2006/0101492 Al
US 2006/0253886 Al
REJECTIONS
Apr. 22, 2003
June 30, 2005
Apr. 20, 2006
May 11, 2006
Nov. 9, 2006
Claims 1-11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Khurana and Chen. Final Act. 6-8.
2
Appeal2014-003492
Application 12/209,853
Claims 12-14, 16-19, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Khurana, Chen, and Fritsch. Final Act. 9-12.
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Khurana, Chen, Fritsch, and Lowcock. Final Act. 12-13.
Claim 25 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Khurana, Chen, Fritsch, and Groff. Final Act. 13.
ISSUES AND ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments that the Examiner has erred. We disagree with Appellant's
contentions, and adopt as our own the findings and reasons set forth by the
Examiner in the Examiner's Answer in response to Appellant's Appeal Brief.
We highlight the following for emphasis.
Claims 1-11
Issue 1: Whether the combination of Khurana and Chen teaches
or suggests a set-top box transmitting a program reminder to a
mobile device in response to input from a switch on the set top
box being configured in an away position.
The Examiner finds Khurana teaches a set-top box transmitting a
program reminder to a mobile terminal, (Ans. 3 (citing Khurana i-f 19)), and
Chen teaches a set-top box transmitting an alert to a mobile device based on
an updated user profile indicating that the user is away. Id. (citing Chen
4:50-5:20, 7:45-50, 8:25--45). The Examiner finds Chen's updatable user
profile, which is stored in the set-top box and indicates when the user is
3
Appeal2014-003492
Application 12/209,853
away, falls within the broadest reasonable interpretation of "a switch on the
set-top box being configured in an away position." See Ans. 4--5.
Additionally, the Examiner finds Khurana teaches set-top boxes have
physical switches, and a person of ordinary skill in the art at the time of the
invention would have found it obvious to use Khurana's physical switches to
update Chen's user profile to indicate when the user was away. Id. at 6
(citing Khurana Fig. 2).
Appellant argues the Examiner erred in rejecting claims 1-11 because:
[O]ne of ordinary skill in the art would interpret "a switch on the
set top box being configured in an away position " as a physical
switch as the switch is "on the set top box" and "configured in
an away position. " In other words, no one or ordinary skill in
the art would interpret "on the set top box" and "configured in
an away position " to be software.
App. Br. 9-10. Appellant further argues the Examiner erred in broadly
interpreting a "switch" to include software (e.g., Chen's user profile)
because the Merriam-Webster definition cited by the Examiner to support
that broad interpretation is secondary to a primary definition indicating that a
switch is "a small device that starts or stops the flow of electricity." Reply
Br. 5. (Internal citations omitted).
We are not persuaded by Appellant's arguments. "[D]uring
examination proceedings, claims are given their broadest reasonable
interpretation consistent with the specification." In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000). "Absent an express definition in their specification,
the fact that appellants can point to definitions or usages that conform to
their interpretation does not make the PTO's definition unreasonable when
4
Appeal2014-003492
Application 12/209,853
the PTO can point to other sources that support its interpretation." In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
Moreover, even if we agreed that the Examiner's interpretation was
unreasonably broad because a switch is a physical device, Appellant has
failed to challenge the Examiner's finding that a person of ordinary skill in
the art at the time of the invention would have found it obvious to use a
physical switch on a set-top box (as taught by Khurana) as a means for
updating a user profile stored in the set-top box (as taught by Chen), e.g., by
toggling the switch to indicate the user was away. See Ans. 6.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection of claims 1-11.
Claims 12-18 and 25
Issue 2: Whether the combination of Khurana, Chen, and Fritsch
teaches or suggests a set-top box transrnzttzng a prograrn
reminder to a mobile device in response to an input provided
from the set top box being in a screen saver mode.
The Examiner finds Khurana teaches a set-top box transmitting a
program reminder to a mobile terminal, (Ans. 6 (citing Khurana i-f 19)), Chen
teaches a set-top box transmitting an alert to a mobile device in response to
input indicating the user is away, (id. at 7 (citing Chen 4:50-5:20, 8:25--45)),
and Fritsch teaches input indicating the user is away provided from the set-
top box being in screen saver mode. Id. (citing Fritsch i-f 49). Based on
these teachings, the Examiner concludes it would have been obvious to a
person of ordinary skill in the art at the time of the invention to modify
Khurana to incorporate features of Chen and Fritsch in order to provide
5
Appeal2014-003492
Application 12/209,853
different ways of notifying Khurana's system of the presence or absence of a
viewer. Id. at 9.
Appellant argues that each of Khurana, Chen, and Fritsch fails to
disclose "transmitting the program reminder ... in response to an input
indicating that the user is away from the set-top box ... wherein the input is
provided from the set-top box being in a screen saver mode." App. Br. 12,
15. 1
We are not persuaded by Appellant's argument. The Examiner does
not find any one of Khurana, Chen, or Fritsch discloses "transmitting the
program reminder ... in response to an input indicating that the user is away
from the set-top box ... wherein the input is provided from the set-top box
being in a screen saver mode," as recited in claim 12. Rather, the Examiner
finds the combination of Khurana, Chen, and Fritsch teaches or suggests this
limitation. See Ans. 6-9. "Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references." In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Rather, "[t]he test for obviousness is what
the combined teachings of the references would have suggested to one of
ordinary skill in the art." In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
1 Appellant further argues that Fritsch "doesn't even discuss a screen saver
mode." Reply Br. 4. We do not consider this argument because it was not
raised in the Appeal Brief or in response to an argument raised in the
Examiner's Answer, and Appellant does not explain why good cause exists
for first raising it in the Reply. See 37 C.F.R. § 41.41(b)(2).
6
Appeal2014-003492
Application 12/209,853
Issue 3: Whether Fritsch is analogous art.
Appellant argues the combination of Khurana, Chen, and Fritsch is
improper because Fritsch is not in the same field of endeavor because
Fritsch "is completely unrelated to sending program reminders." App. Br.
15.
We are not persuaded by Appellant's argument. The inventions
described in Fritsch and Khurana, as well as in Appellant's Specification, are
all in the same field of controlling set-top boxes to record media content.
For example, Appellant's invention is directed to "controlling a set-top box
or a digital video recorder using a mobile device." Spec. i-f 1. Khurana's
invention is directed to "methods for mobile stations to request that a
television device record audio and/or visual content," where "the television
device can be a digital video recorder (DVR)." Khurana i-fi-13, 14. And
Fritsch's invention is directed to "techniques for recording one or more
scheduled programs for later retrieval," where the recording is performed by
"a set-top box 102 coupled to a recording mechanism 104." Fritsch i-fi-19, 12.
Accordingly, we are not persuaded that Fritsch and Khurana are not in the
same field of endeavor.
Issue 4: Whether the combination of Khurana, Chen, and Fritsch
would change the principle of operation of the references or
otherwise render them unsatisfactory for their intended purpose.
Appellant argues Khurana teaches sending reminders set up by a user,
and Chen teaches sending reminders based upon a user profile. App. Br. 15.
Appellant further argues, because claim 12 recites "only transmitting the
program reminder ... in response to input indicating that the user is
7
Appeal2014-003492
Application 12/209,853
away ... ," Khurana's and Chen's reminders would have to be completely
eliminated to meet the claim limitation, and this would change their
principles of operation and render them unsatisfactory for their intended
purpose. Id. at 15-16. We are not persuaded by Appellant's arguments,
which mischaracterize the teachings of Khurana, and are inconsistent with
the teachings of Appellant's own Specification and claims.
Appellant mischaracterizes Khurana, because Khurana is not limited
to sending program reminders based solely on user-defined preferences or
"reminders set up by a user." For example, Khurana teaches "the content
server can automatically determine the content preferences based on the
user's previous recordings," and send program reminders based on these
automatically determined content preferences. Khurana i-f 17 (emphasis
added).
More importantly, Appellant's argument is inconsistent with
Appellant's own Specification and claims, which teach a user setting up
program reminders prior to the set-top box "only transmitting the program
reminder ... in response to input indicating that the user is away ... ,"as
recited in claim 12. For example, the Specification teaches "[t]he user may
use various search criteria when requesting a program reminder," and "the
user may configure the STB 210 to provide a program reminder about a
local news broadcast to the user's mobile device 240." Spec i-fi-125, 38.
Likewise, claim 1 recites "receiving an indication from the user of interest in
a program," in addition to "only transmitting the program reminder ... in
response to the input indicating that the user is away .... " App. Br. 23
(Claims App'x).
8
Appeal2014-003492
Application 12/209,853
The "only transmitting" limitation of claim 12 specifies when to send
a program reminder, i.e., when an input indicates the user is away. It does
not specify which program reminder to send. Khurana's user selection
functionality addresses which program reminders to send, not when to send
them. Chen's user profile addresses when to send program reminders,
namely, when the user is away. Consequently, modifying Khurana based on
the teachings of Chen to only send program reminders when a user profile
(an input) indicates the user is away would neither change Khurana's
principle of operation nor render Khurana's set-top box unfit for its intended
purpose, i.e., to remind a user of programs about which the user wished to be
reminded.
Accordingly, for the reasons discussed above, we are not persuaded
the Examiner erred in rejecting claim 12 as obvious over Khurana, Chen,
and Fritsch, and sustain the rejection. We similarly sustain the rejections of
claims 13-18 and 25, which are not separately argued. App. Br. 16, 22.
Claims 19 and 22
Issue 5: Whether the combination of Khurana, Chen, and Fritsch
teaches or suggests a headend transmitting a program reminder
to a mobile device in response to an input provided from a set
top box being in a standby mode.
The Examiner finds Khurana teaches a set-top box transmitting
through a headend a program reminder to a mobile terminal (Ans. 11-12
(citing Khurana i-f 19, Fig. 2)), Chen teaches a set-top box transmitting an
alert to a mobile device in response to input indicating the user is away, (id.
9
Appeal2014-003492
Application 12/209,853
at 12 (citing Chen 4:50-5:20, 8:25--45)), and Fritsch teaches input indicating
the user is away is provided from the set-top box being in standby mode. Id.
(citing Fritsch i-f 49). The Examiner concludes it would have been obvious
to a person of ordinary skill in the art at the time of the invention to modify
Khurana based on the teachings of Chen and Fritsch in order to provide
different ways of notifying Khurana's system of the presence or absence of a
viewer. Id.
Appellant argues that each of Khurana, Chen, and Fritsch fails to
disclose a headend that "transmits the program reminder to the mobile
device in response to an input indicating that a user is away from the set-top
box ... wherein the input is provided from the set-top box being in a
standby mode," as recited in claim 19. App. Br. 16-20.
We are not persuaded by Appellant's argument. The Examiner does
not find that any of Khurana, Chen, or Fritsch discloses a headend that
"transmits the program reminder to the mobile device in response to an input
indicating that a user is away from the set-top box ... wherein the input is
provided from the set-top box being in a standby mode," as recited in claim
19. Rather, the Examiner finds the combination ofKhurana, Chen, and
Fritsch teaches or suggests this limitation. See Ans. 6-9. "Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references." See
Merck, 800 F .2d at 1097. Rather, "[ t ]he test for obviousness is what the
combined teachings of the references would have suggested to one of
ordinary skill in the art." See Young, 927 F.2d at 591.
Appellant further argues the combination of Khurana, Chen, and
Fritsch is improper because (a) Fritsch is not in the same field of endeavor
10
Appeal2014-003492
Application 12/209,853
because Fritsch "is completely unrelated to sending program reminders,"
and (b) the combination would change the principle of operation of Khurana
and Chen, thereby rendering the combination of Khurana, Chen, and Fritsch
unsatisfactory for its intended purpose. App. Br. 20-21.
Appellant raised similar arguments with respect to the rejection of
claim 12, which we find unpersuasive for the reasons discussed supra.
Accordingly, we sustain the Examiner's rejection of claim 19, and of claim
22 which is not separately argued. See App. Br. 21.
DECISION
The Examiner's decision to reject claims 1-19, 22, and 25 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)(l )(iv).
AFFIRl\rIED
11