Ex Parte Rosenfeld

Patent Trial and Appeal Board

Apr 28, 2016

12493483 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/493,483 0612912009
110936 7590 05/02/2016
Great Lakes Intellectual Property, PLLC /CableLabs
44750 Yorkshire
Novi, MI 48375
Eric Rosenfeld
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.
CTL 60196 PUS I 60196 9441
EXAMINER
ADAMS, EILEEN M
ART UNIT PAPER NUMBER
2481
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):
j. buser@ greatlakesiplaw. com
d.smith@cablelabs.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC ROSENFELD
Appeal2014-004803
Application 12/493 ,483 1
Technology Center 2400
Before JOSEPH L. DIXON, JOHN P. PINKERTON, and
JAMES W. DEJMEK, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-13, 15-17, and 21-24. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant indicates that the real party in interest is Cable Television
Laboratories, Inc.
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Application 12/493,483
The claims are directed to an automated programming recording. A
method and system of providing access to television programs without
requiring a user to operate an electronic programming guide or to
independently determine information required to access the television
program. (Abstract). Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. For use within a television system, a method of recording
a first or second television program advertised during playback
of a third television program, wherein a recorder configured to
record television program has recording information sufficient to
set a recording for the third program and lacks recording
information sufficient to set a recording for the first and second
television programs, the method comprising:
embedding information within signaling tuned to by an
output device to display the third program, the embedded
information including recording information sufficient to
facilitate the recorder recording the first program in the event an
access request is received during a first portion of the third
program and recording information sufficient to facilitate the
recorder recording the second program in the event the access
request is received during a second portion of the third program;
and
providing access instructions at least to the recorder for
recording the first or second program according to the embedded
information based on whether the access request is received
during the first or second portion of the third program.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Proehl et al.
Maegawa
US 2002/0124250 Al
US 2008/0005505 Al
2
Sept. 5, 2002
Jan.3,2008
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Application 12/493,483
Sakao et al. US 2008/0235726 Al
Ellis et al. US 2010/0135639 Al
REJECTIONS
Sept. 25, 2008
June 3, 2010
The Examiner made the following rejections:
Claims 1, 3, 4, 7, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sakao in view of Maegawa.
Claims 2, 5, 6, 15-17, and 22-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sakao in view of Maegawa as applied to
Claims 1, 3, 4, 7, and 21, and further in view of Proehl.
Claims 8, 9, and 11-13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Maegawa in view of in view of Proehl.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maegawa in view of in view of Proehl as applied to
Claims 8, 9, and 11-13 further in view of Ellis.
ANALYSIS
We concur with the conclusions reached by the Examiner, and adopt
as our own ( 1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken (Final Act. 4-34; Ans. 5-35), and (2)
the reasons set forth by the Examiner in the Examiner's Answer in response
to Appellants' Appeal Brief (Ans. 35-39). We highlight and amplify certain
teachings and suggestions of the references, as well as certain ones of
Appellants' arguments as follows.
Claims 1, 3, 4, 7, and 21
With respect to independent claim 1, Appellant contends the claimed
invention recites:
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Application 12/493,483
embedding information within signaling tuned to by an output device
to display the third program, the embedded information including
recording information sufficient to facilitate the recorder recording the
first program in the event an access request is received during a first
portion of the third program and recording information sufficient to
facilitate the recorder recording the second program in the event the
access request is received during a second portion of the third program.
(App. Br. 5 (emphasis omitted).) Appellant further contends:
The cited references fail to sufficiently suggest or disclose
embedding recording information within tuned to signaling
where the recording information is "sufficient to facilitate the
recorder recording", as required to properly reject claim 1 under
35 U.S.C. § 103(a).
The cited references merely relate to capturing
information included in tuned to signaling in order to formulate
queries for recording information. Not actual recording
information "sufficient to facilitate the recorder recording". The
information captured by the cited references is not in and of itself
"sufficient to facilitate the recorder recording" - it is merely
sufficient to .c. • 1. . . .c. ,..J. 1aCilitate requestmg or querymg 1or recorumg
information.
(App. Br. 5.) Appellant further contends:
The Sakao reference generates extracted pieces of
information using audio and character recognition processes
whereby that information is then used to formulate a search for
recording information, i.e., the channel and broadcasting station
to be recorded. Once the recording information is collected for
each reservation identified in the search results, the search results
are displayed within a GUI to facilitate selection and subsequent
recording.
(App. Br. 7.) Appellant further contends:
Simply stated, the cited references merely suggest the
tuned to signaling including information useful in requesting
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recording information and not the recording information itself,
or in the terms of claim 1, recording information "sufficient to
facilitate the recorder recording".
(App. Br. 6.) Appellant further contends:
The Maegawa reference notes the broadcast rece1vmg
apparatus 100 (recorder) receiving metadata having the channel
and time for the recording from the metadata providing server
200 via the Internet 300. Importantly, the Maegawa reference
fails to sufficiently suggest or disclose the metadata having the
recording being embedded within signaling tuned to display a
television program.
The Maegawa reference performs searches, sorts or other
queries for recording information based on metadata collected
for a user's action. Such processes, searching, etc. would be
unnecessary if the Maegawa reference disclosed embedding
recording information within a commercial advertising the
program desired for recording.
(App. Br. 8.) Finally, Appellant contends:
The Sakao and iviaegawa references merely suggest the
tuned to signaling including information useful in generating
metadata for querying or searching for recording information and
not the recording information itself, or in the terms of claim 1,
recording information "sufficient to facilitate the recorder
recording".
The invention of claim 1 is limited to embedding recording
information "sufficient to facilitate the recorder recording". The
cited references fail to sufficiently suggest or disclose embedding
recording information "sufficient to facilitate the recorder
recording", as required to properly reject claim 1under35 U.S.C.
§ 103(a). Consequently, independent claim 1 is patentable and
nonobvious over the cited references.
(App. Br. 8.)
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The Examiner maintains:
Appellant's claim language does not expressly recite directly
capturing or embedding said sufficient information, nor does the
claim language recite the manner in which the sufficient
information is embedded. Further, Appellant's claim language
recites "sufficient to facilitate" rather than "sufficient to directly
record." Finally, the claimed invention does not specifically
recite "recording information necessary for the recorder to
schedule a recording .... " Therefore, Sakao in view ofMaegawa
does disclose Claim 1 as recited as well as dependent Claim 4
and Claim 7.
(Ans. 35). We agree with the Examiner and find the claim language
"sufficient to facilitate the recorder recording" has not been clearly defined
in the Specification in order to clearly associate the information with any of
Appellant's disclosed embodiments. ("[E]mbedding all the scheduling
information", Spec. page 7, line 8; "embedding a reference ID or other ID
within the currently tuned-to program stream to identifying the program
desired for recording." Spec. page 7, line 18.) We agree with the Examiner
that the claim limitation "sufficient to facilitate the recorder recording" may
be broadly and reasonably interpreted as any embedded information which
facilitates the ultimate recording of the desired programming or commercial.
Consequently, Appellant has not shown error in the Examiner's conclusion
of obviousness.
Claim 3
With respect to dependent claim 3, Appellant repeats the language of
dependent claim 3 and briefly discusses the teachings of the Maegawa
reference. (App. Br. 9.) Appellant argues "[t]he separate connections
demonstrate the Maegawa reference teaching away from any suggestion or
motivation to embed recording information within the tuned to television
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signaling, let alone embedded recording information 'sufficient to facilitate
the recorder recording' identifying 'the time period and the channel' to be
recorded," which is the limitation argued with respect to independent claim
1. (App. Br. 9.)
The Examiner similarly interprets the claim language and identifies:
Appellant's claim language does not expressly recite directly
embedding said information, nor does the claim language recite
the temporal or physical manner in which the information is
embedded into the signal. Maegawa does not teach away from
Claim 3 as said claim is recited.
(Ans. 36.) We agree with the Examiner and find Appellant's argument does
not show error in the Examiner's conclusion of obviousness. Consequently,
we sustain the obviousness rejection of dependent claim 3.
Claim 8
With respect to independent claim 8, Appellant contends:
The Proehl reference relates generally to playback of
extended length advertisements (ELAs ). The ELAs are
determined as a function of an advertisement being shown when
a user request to view an extended version of the advertisement.
If the ELA is already present on a local storage device, than the
ELA is played, and if it is not already present on the local storage
device, then the ELA is downloaded for later viewing. The
Proehl reference, importantly, fails to sufficiently suggest or
disclose retrieving recording information, as required by the
preamble of claim 8 to at least include time period and channel,
from a commercial (advertisement).
The Proehl reference merely relates to starting playback of
a previously stored ELA or downloading a new ELA. It fails to
sufficiently suggest or disclose how recording information
specifying time period and channel is retrieved, let alone that
such information is retrieved "from the commercial", as required
to properly reject claim 8 under 35 U.S.C. § 103(a).
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(App. Br. 11-12.) Appellant further contends:
The Proehl reference identifies an advertisement from an
identify number "encoded" into the video stream. The "encoded"
identify number identifies a previously stored ELA to be
instantly played or an ELA to be downloaded for later viewing.
The "encoded" identifying number does not identify recording
information, let alone recording information specifying time
period and channel for a recording to take place beyond an
upcoming period of time for which a recorder has the necessary
recording information (time period and channel).
The cited references fail to sufficiently suggest or disclose
retrieving recording information (time period and channel) "from
a commercial", as required to properly reject claim 8 under 35
U.S.C. § 103(a). Consequently, independent claim 8 is
patentable and nonobvious over the cited references.
(App. Br. 13.)
The Examiner maintains:
The Appellant argues on pages 11-13 that Proehl does not
read upon Claim 8 as recited because the cited reference fails to
sufficiently suggest or disclose 'retrieving recording information'
as required by the preamble of Claim 8 to at least include 'time
period and channel from a commercial'. Examiner respectfully
submits Proehl was not relied upon to disclose the preamble of
Claim 8, nor was Proehl relied upon to disclose 'retrieving time
period and channel from a commercial'. Therefore, Maegawa in
view of Proehl does disclose Claim 8 as recited, as well as
dependent Claim 9 and Claim 11.
(Ans. 36.)
Appellant only sets forth arguments with respect to independent claim
8 in the Reply Brief. Appellant contends:
While it is somewhat unclear, the above quotation appears to
indicate the Examiner relying upon the Maegawa reference to
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suggest the limitations of claim 8 directed towards retrieving
recording information (time period and channel) from a
commercial. This position is contrary to the Examiner's
statements in the final Office Action mailed May 16, 2013.
Page 27 of the final Office Action notes:
MAEGA WA does not disclose but PROEHL
discloses retrieving recording information for the
program from the commercial if the program occurs
beyond the upcoming period of time ([0015]; "The
television channel
At least based on the position outlined by the Examiner in
the final Office Action, Appellant submits that the arguments
submitted in the Appeal Brief to be directed toward the proper
reference, at least with respect to the limitations of claim 8
directed towards retrieving recording information (time period
and channel) from a commercial.
The invention of claim 8 is believed to be patentable and
nonobvious over the cited references for the reason submitted in
the Appeal Brief. To the extent the examiner now intends to rely
upon the Maegawa reference instead of the Proehl reference to
teach the limitations of claim 8 directed towards retrieving
recording information (time period and channel) from a
commercial, Appellant submits the Maegawa reference similarly
fails to sufficiently suggest or disclose the noted claim
limitations.
The arguments set forth within the Appeal Brief regarding
the teachings of the Maegawa reference are hereby incorporated
by reference in their entirety. As noted therein, the Maegawa
reference relies on metadata to perform searches for recording
information and fails to sufficiently suggest or disclose relying
on recording information (time period in channel) embedded
within a commercial as recited in claim 8.
The Maegawa reference performs searches, sorts or other
queries for recording information based on metadata collected
for a user's action. Such processes, searching, etc. would be
unnecessary if the Maegawa reference disclosed embedding
recording information within a commercial.
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(Reply Br. 2-3.) As discussed above, we find Appellant's arguments
regarding the Maegawa reference to be unpersuasive of error in the
Examiner's conclusion of obviousness.
Claim 12
With respect to dependent claim 12, Appellant relies upon the
arguments advanced with respect to claims 1 and 3. Because dependent
claim 12 depends from independent claim 8, Appellant's argument does not
show error in the Examiner's conclusion of obviousness. The Examiner
further maintains:
Appellant's claim language does not expressly recite the
manner of embedding said information, nor does the claim
language recite the temporal or physical manner in which the
information is embedded into the signal. Maegawa does not
teach away from Claim 12 as said claim is recited. Therefore,
Maegawa does disclose Claim 12 as recited.
(Ans. 37.) We additionally agree with the Examiner that the claim language
is broader than Appellant appreciates.
Claim 13
Appellant contends that:
[Parent] Claim 8 requires recording information to be
included within the commercial that is sufficient to meet the
requirements of the recorder to schedule a recording, which at a
minimum is stated in the preamble of claim 8 to be time period
and channel. Claim 13 sets a limit to the recording information
available under claim 8 to be "time period and channel", thereby
causing claim 13 to further limit claim 8. Or, to the extent the
Examiner argues the preamble to claim 8 as being non-limiting,
claim 13 more particularly defines the embedded recording
information to be "time period and channel".
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The Examiner relies upon the ~vfaegawa to teach the
limitations of claim 13. As repeated demonstrated above, the
Maegawa reference fails to embed time period and channel as
recording information included within a commercial transmitted
within a linear broadcast, as required to properly reject claim 13
under 35 U.S.C. § 103(a). Consequently, claim 13 is patentable
and nonobvious over the cited references.
(App. Br. 14--15.)
The Examiner maintains:
Appellant's claim language does not expressly recite the
manner of embedding said information, nor does the claim
language recite the temporal or physical manner in which the
information is embedded into the signal. Maegawa does not
teach away from Claim 13 as said claim is recited. Therefore,
Maegawa does disclose Claim 13 as recited.
(Ans. 37-38.) We agree with the Examiner that the combination of claims 8
and 13 does not require the embedded information includes time period and
channel, but the embedded information merely "identifies" which may
indirectly be looked up or retrieved from a search.
Claims 22, 15, 17, and 23
Claim 22
Appellant contends:
Claim 22 requires the embedded recording information
identify "a time period and a channel" for the recording.
The Examiner relies upon the Maegawa to teach the
limitations of claim 22. As repeated [sic] demonstrated above,
the Maegawa reference fails to embed time period and channel
as recording information included within signaling tuned to by
the output device when outputting the third program, as required
to properly reject claim 22 under 35 U.S.C. § 103(a).
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Consequently, claim 22 is patentable and nonobvious over the
cited references.
(App. Br. 15-16.)
The Examiner sets forth similar lines of reasoning as with claims 12
and 13 with respect to claim 22. (Ans. 38.) We agree with the Examiner.
Claim 152
Appellant argues:
The "non-loaded" recording instructions "embedded"
within the in-band (IB) signaling associated with playback of the
second program must be "sufficient for use with the recorder"
such that the recorder is able to "automatically schedule the
recording of the first program". In other words, the embedded
recording instructions must be sufficient to enable the recorder
to set a recording for the first program during playback of the
second program.
The cited references fail to sufficiently suggest or disclose
embedding recording instructions whatsoever. The Sakao and
Maegawa references merely suggest capturing metadata,
content, keywords and other information transmitted with
program signaling to facilitate searching for and subsequently
retrieving recording instructions. The Proehl reference merely
suggests encoded identify numbers for use in playing previously
stored extended length advertisements (EL As) and downloading
non-stored ELAs.
None of the references sufficiently suggest or disclose
embedding recording instructions within program signaling, let
alone "recording instructions being sufficient for use with the
recorder to automatically schedule the recording", as required to
2 We leave it to the Examiner during any further prosecution to determine if
independent claim 15 pertains to retrieving embedded instructions or to
embedding the instructions during playback because independent claim 15
recites "during playback of the second program other than the first program,
embedding non-loaded recording instructions within the second program as
in-band (IB) signaling." We interpret the language as retrieving embedded
instructions.
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properly reject claim 16 under 35 U.S.C. § 103(a).
Consequently, claim 15 is patentable and nonobvious over the
cited references.
(App. Br. 16-17.)
The Examiner sets forth similar lines of reasoning as with claims 12
and 13 with respect to claim 15. (Ans. 38.) We agree with the Examiner.
Claim 17
Appellant argues:
Claim 17 clearly requires "time period and the channel" to
be embedded within "a transport stream used to transport the
second program". These limitations clearly required the
signaling or transport stream being played during the second
program to include the embedded recording instructions
specifying "the time period and the channel". In other words, the
recording instructions must be included with the signaling being
played, not signaling subsequently retrieved using a search or
other query.
The Examiner relies upon the Maegawa to teach the
limitations of claim 17. The Maegawa reference uses metadata
to perform searches for times and channels to be recorded. The
searches are required due to the absence of recording information
within the program being played. The Examiner has failed to
properly cite to a reference that includes "the timer period and
the channel" within a "transport stream used to transport" the
program being played, as required to properly reject claim 17
under 35 U.S.C. § 103(a). Consequently, claim 17 is patentable
and nonobvious over the cited references.
(App. Br. 17.)
The Examiner sets forth similar lines of reasoning as with claims 12
and 13with respect to claim 17. (Ans. 39.) We agree with the Examiner.
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Appellant argues:
Claim 23
Claim 23 requires the recording information identifying
"the television channel and the recording period" to be embedded
"as part of a commercial" so that the output device can recover
the "the television channel and the recording period" while the
commercial is being processed for output to a viewer.
The cited reference fails to teach such a sequence of
events, or more particularly, a sequence where "the television
channel and the recording period" are recovered during play of a
commercial due to "the television channel and the recording
period" being embedded "as part of the commercial. Simply
stated, claim 23 requires "the television channel and the
recording period" to be ascertained during play of the
commercial. The cited reference fail to sufficient suggest or
disclose ascertaining that type of recording information while a
commercial is being played.
The cited references at best suggest obtaining "the
television channel and the recording period" through searching
after a commercial plays - not while the commercial plays. (See
arguments above with respect to the Sakao, Maegawa and Proehl
references.) As a result, the cited references fails to sufficient[ly]
suggest or disclose each limitation of claim 23 as required to
properly reject claim 23 under 35 U.S.C. § 103(a).
(App. Br. 18.)
The Examiner sets forth similar lines of reasoning as with claims 12
and 13with respect to claim 23 (Ans. 39.) We agree with the Examiner.
CONCLUSION
The Examiner did not err in rejecting claims 1-13, 15-17, and 21-24
based upon obviousness.
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DECISION
For the above reasons, we sustain the Examiner's rejections of claims
1-13, 15-17, and 21-24.
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).
AFFIRMED
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