Ex Parte Schwartz et alDownload PDFPatent Trial and Appeal BoardMar 31, 201712104031 (P.T.A.B. Mar. 31, 2017) Copy Citation 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. 12/104,031 04/16/2008 Samuel Schwartz 007412.00220 3121 71867 7590 04/04/2017 BANNER & WITCOFF , LTD ATTORNEYS FOR CLIENT NUMBER 007412 1100 13th STREET, N.W. SUITE 1200 WASHINGTON, DC 20005-4051 EXAMINER RYAN, PATRICK A ART UNIT PAPER NUMBER 2427 NOTIFICATION DATE DELIVERY MODE 04/04/2017 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): PTO-71867 @bannerwitcoff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SAMUEL SCHWARTZ, BRUCE HERTZFELD, and ERIC BUDIN Appeal 2014-001295 Application 12/104,031 Technology Center 2400 Before DAVID M. KOHUT, JOHNNY A. KUMAR, and KAMRAN JIVANI, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1, 6, 7, 9-14, 16, 19-27, and 29.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Claims 2-5, 8, 15, 17, 18, and 28 were cancelled previously. Appeal 2014-001295 Application 12/104,031 INVENTION The invention is directed to methods and an apparatus for providing a user-specific list of programs for online viewing based on a user profile stored in a DVR. Abstract. Claims 1 and 12 are illustrative of the invention and are reproduced below: 1. An apparatus comprising: a computing device configured to: communicate with a DVR to retrieve a user profile indicating programs locally recorded or scheduled to be recorded on said DVR; communicate with at least one content server having a library of programs available for online delivery from the at least one content server to a remote device different from said DVR; compare the user profile and the library of programs to produce a list of programs, wherein each program included in the list is both available for online delivery from the library of programs and locally recorded or scheduled to be recorded on said DVR; and deliver, to the remote device, a user menu providing the list of programs. 12. A method comprising: retrieving over a network, by a computing device, a user profile indicating programs locally recorded or scheduled to be recorded on a DVR; determining that one or more of the programs locally recorded or scheduled to be recorded on the DVR are also stored in at least one content server and available for online delivery to a remote device from the at least one content server; providing, to a remote device, a list of programs, each program on the list being one of the programs locally recorded or scheduled to be recorded on the DVR, and determined to be stored in the at least one content server and available for online delivery to said remote device from the at least on content server; 2 Appeal 2014-001295 Application 12/104,031 communicating with said DVR periodically to obtain changes to said user profile; and updating said list with said changes to said user profile. REFERENCES Thomas Hassell et al. DeYonker et al. Spiegelman Hasek US 2002/0059621 Al US 2003/0149980 Al US 2006/0107289 Al US 2008/0155079 Al US 8,181,206 B2 May 16, 2002 Aug. 7, 2003 May 18,2006 June 26, 2008 May 15,2012 REJECTIONS AT ISSUE Claims 1, 6, 7, 9, 10, 12, 13, 14, 16, 22, and 23—27 stand rejected under 35 U.S.C. § 102(e) as anticipated by Hasek. Final Act. 3—11. Claims 11, 19, 20, and 29 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Hasek and Hassell. Final Act. 11—15. Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Hasek and DeYonker. Final Act. 15—16. ISSUES Did the Examiner err in finding that Hasek discloses “compar[ing] the user profile and the library of programs to produce a list of programs,” as recited in independent claim 1 ? Did the Examiner err in finding that Hasek discloses “providing, to the remote device, a list of programs, each program on the list being... determined to be stored in the at least one content server” and “communicating with said DVR [to] periodically to obtain changes to said user profile,” as recited in independent claim 12? 3 Appeal 2014-001295 Application 12/104,031 Did the Examiner err in finding that Hasek discloses “determining that one or more of the programs ... on a DVR is also stored on a content server,” as recited in independent claim 24, and similarly recited in independent claim 27? Did the Examiner err in finding that Hasek discloses “wherein the DVR is a user’s virtual DVR,” as recited in dependent claim 23? Did the Examiner err in finding that the combination of Hasek and Hassell teaches or suggests “in response to said selection of said selected program, prompting the DVR to update said user profile on said DVR to indicate that said selected program has been watched,” as recited in dependent claim 19, and similarly recited in dependent claim 20. Did the Examiner err in finding that the combination of Hasek and Hassell teaches or suggests to “communicate to the DVR that the selected program has been delivered from the content server to the remote device,” as recited in dependent claim 29? ANALYSIS Claims 1, 6, 7, 9—11, 21, and 22 Independent claim 1 recites “compare the user profile and the library of programs to produce a list of programs.” Claims 6, 7, 9-11, 21, and 22 depend upon claim 1. The Examiner finds Hasek discloses listing available titles to the Remote Client Device (RCD) by providing content to the user through generating a list of titles based on content including previously purchased or downloaded content and content stored on the DVR, after establishing remote person content access. Ans. 4—5. Thus, the Examiner concludes that because Hasek discloses comparing content from a local 4 Appeal 2014-001295 Application 12/104,031 device and a third party content source, Hasek is comparing a user profile to a list of programs. Ans. 4-5. Appellants disagree and argue that Hasek merely discloses one embodiment in which a list of programs is pre-screened based solely on content stored on a DVR, such as purchased or downloaded content, and another embodiment in which a DVR is checked for the presence of content in response to a selection of the content from the list of programs. App. Br. 11. Appellants contend that Hasek discloses presenting programs based upon what has already been purchased or downloaded. Reply Br. 2. Therefore, Appellants argue that the Examiner fails to find in Hasek disclosure of a user profile being compared to a library of programs. App. Br. 6; Reply Br. 2-3. We are persuaded by Appellants’ arguments of Examiner error. As correctly stated by Appellants (App. Br. 6), Hasek does not compare a user profile and a library of programs to produce a list of programs. Instead, Hasek’s pre-screening refers to presenting a list of programs previously purchased or downloaded to the user’s DVR and Hasek’s synchronizing and correlating refers to content selected from a list being verified to be present on the user’s DVR. Reply Br. 2. Neither Hasek technique describes a comparison involving the user profile to produce a list of programs. Further, we are unable to discern in Hasek adequate disclosure of the claimed comparison. Accordingly, we do not sustain the Examiner’s rejection of claims 1, 6, 7, 9-11, 21, and 22. 5 Appeal 2014-001295 Application 12/104,031 Claim 12 Independent claim 12 recites “providing, to a remote device, a list of programs, each program on the list being . . . determined to be stored in the at least one content server.” Appellants argue that Hasek fails to disclose the above limitation. App. Br. 11-12; Reply Br. 3. Specifically, Appellants argue that the list of programs disclosed by Hasek does not include a list of programs determined to be stored in at least one content server and available for online delivery to said remote device from the at least one contents server. App. Br. 12. We disagree with the Appellants. As correctly stated by the Examiner, Hasek teaches listing programs by way of listing available titles from both the Content Source 206 and Local Client 208 to the RCD (Ans. 4); wherein the user, on the RCD, can browse and select content for remote delivery to the RCD. Final Act. 6—7. Thus, because the content is remotely delivered to the RCD, we agree with the Examiner (Final Act. 6) that Hasek does disclose a remote content server providing the remote content to the RCD. As such, we do not find Appellants’ argument persuasive. Independent claim 12 additionally recites “communicating with said DVR periodically to obtain changes to said user profile.” The Examiner finds that Hasek discloses this limitation because Hasek discloses that content lists are updated to reflect updated third party purchases. Ans. 5—6; Final Act. 4. Further the Examiner finds that purchasing third party content can be repeated. Ans. 6; Final Act. 4. Appellants disagree with the Examiner. App. Br. 12; Reply Br. 2—3. Appellants argue (id.) that the term “periodically” does not include “in 6 Appeal 2014-001295 Application 12/104,031 response to a request being received;” however, neither the plain claim language nor its support in the Specification is limited so narrowly. We apply the broadest reasonable interpretation of claim terms, consistent with the specification, as would be understood by one of ordinary skill in the art. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). Where, as here, the Specification does not explicitly define a term, the term should be given its ordinary meaning. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Applying these principles, we are not persuaded, based on Appellants’ argument that the term “periodically” precludes updates performed to reflect third party purchases. We note the Specification broadly describes: In step 206, the preference server updates the User Menu. This may involve simply contacting the DVR periodically to determine changes to the user profile. Alternatively, this step may be performed each time the user logs on to the User Menu. In yet another embodiment, this is done after the user affirmatively requests an update. Still other updating scenarios are possible. Spec. 135. In light of the foregoing, we determine the Examiner’s finding that the term “periodically” encompasses the time period where a user profile is updated when third party purchases are made (Ans. 5) is reasonable and consistent with the claim. As such, we agree with the Examiner’s finding that Hasek discloses the disputed limitation. Therefore, for the reasons stated supra, we sustain the Examiner’s rejection of claim 12. 7 Appeal 2014-001295 Application 12/104,031 Claims 24 and 27 Independent claim 24 recites “determining that one or more of the programs recorded or scheduled to be recorded on a DVR is also stored on a content server.” Independent claim 27 recites “generating a list of programs, wherein each program on the list is identified as being recorded or scheduled to be recorded on a DVR, and also being stored on a content server and available for delivery from the content server to a remote device.” Appellants argue the claims together. App. Br. 12-13. The Examiner finds that Hasek discloses the above referenced limitation because Hasek discloses a content source that is in communication with a remote client. Final Act. 8. Additionally, the Examiner finds that the communication between the two devices allows the content from the content server to be searched using a browser containing a listing of titles and stored by the subscriber on the home DVR. Final Act. 8. Thus, the Examiner concludes that in order to store the information on the DVR from the content server, it must have been determined that the program was located on the content server’s list. Final Act. 8. Appellants argue that Hasek fails to generate a list, as indicated in the arguments directed toward claim 1. App. Br. 13. Additionally, Appellants contend that Hasek fails to disclose a list that contains content based on determining or identifying content available from a content server. App. Br. 13. We note that claims 24 and 27 are different in scope than claim 1. Claim 1 requires a comparison step in order to produce a list, whereas claims 24 and 27 simply require the transmission of a list of programs. As such, Appellants’ arguments with respect to Hasek failing to generate a list with 8 Appeal 2014-001295 Application 12/104,031 regard to claims 24 and 27 for the same reasons as indicated with respect to claim 1 are not persuasive. Additionally, Appellants do not address the Examiner’s specific findings with regard to claims 24 and 27 and we agree with the Examiner (Final Act. 8—10) that if a selected title is present on the DVR, a third party content source is accessed to locate and provide the requested content. Final Act. 8. As such, we sustain the Examiner’s rejection of claims 24 and 27. Claim 23 Dependant claim 23 recites the limitation: “wherein the DVR is a user’s virtual DVR.” The Examiner finds that Hasek explicitly teaches using a virtual DVR. Ans. 7-8. Appellants argue that Hasek fails to disclose the above limitation. App. Br. 15. Specifically, Appellants argue that the virtual DVR is an alternative embodiment that is not used together with the third party content source, which would not lend to an anticipation rejection. App. Br. 15; Reply Br. 4-5. We disagree with the Appellants. The Examiner’s finding makes clear that the content source (206) in Hasek is the third party content source and the client (208) is the DVR. Final Act. 6. The Examiner further finds that Hasek teaches the DVR can be either a subscriber’s DVR, a networked DVR, or a virtual DVR. Ans. 7—8; see also Hasek, col. 29,11. 1—18. The explanation of the DVR is not an explanation of multiple, distinct embodiments, but rather an explanation of what type of DVR can be used in the invention. Put another way, each type of DVR is used in the same embodiment with the same third party content 9 Appeal 2014-001295 Application 12/104,031 source and, therefore, is appropriate for an anticipation rejection. Thus, we sustain the Examiner’s rejection of claim 23. Claims 13,14,16, 25, and 26 Appellants make the same arguments with respect to claims 13, 14, 16, 25, and 26 as with independent claims 12 and 24. App. Br. 13. As such, we sustain the Examiner’s rejection of claims 13, 14, 16, 25, and 26 for the same reasons discussed above with respect to claims 12 and 24. Claims 19 and 20 Dependent claim 19 recites “in response to said selection of said selected program, prompting the DVR to update said user profile on said DVR to indicate that said selected program has been watched.” Dependent claim 20 recites “prompting said remote device to present a user an option to update said user profile on said DVR to indicate that said selected program has been watched after said selected program is selected.” Appellants argue these claims together. App. Br. 16-17; Reply Br. 5—6. As indicated above with respect to claim 12, the Examiner finds that Hasek teaches a remote device. Ans. 9. The Examiner additionally finds that Hassell teaches a system that indicates when a selected program has been watched. Final Act. 13; Ans. 9. Thus, the Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the media browsing interface of Hasek to include the indication of viewed content, as taught by Hassell, in order to enable an end user to more efficiently find unwatched content. Ans. 9. 10 Appeal 2014-001295 Application 12/104,031 Appellants argue that the listing grid 91 of Hassell only indicates that a locally stored program has been viewed and does not provide a way to remotely update a user profile on a DVR. App. Br. 17; Reply Br. 5. Additionally, Appellants contend that Hassell does not provide the user a choice, option, or ability to update said user profile. App. Br. 17; Reply Br. 5. We disagree with the Appellants. Contrary to Appellants’ argument, the Examiner’s rejection does not seek to incorporate bodily Hasek with Hassell. Instead, the Examiner finds that it was known in the art for a user to be able to indicate whether a program was previously viewed. Ans. 9. The Examiner’s finding (Ans. 9) would apply whether the program was located on a local device or a remote device because this is merely a simple substitution of known elements according to known methods that yields predictable results. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Accordingly, for the reasons stated supra, we sustain the Examiner’s rejection of claims 19 and 20. Claims 29 Dependent claim 29 recites “communicat[ing] to the DVR that the selected program has been delivered from the content server to the remote device.” The Examiner finds that the combination of Hasek and Hassell teaches this limitation. Final Act. 12. In particular, the Examiner finds that Hassell teaches a system that indicates when a program has been watched and, therefore, indicating delivery from the content server to the remote device. Final Act. 12. 11 Appeal 2014-001295 Application 12/104,031 Appellants disagree with the Examiner’s findings. App Br. 18. Specifically, Appellants argue that the viewed column in Hassel merely indicates whether content has been viewed, not whether the program has been delivered to the remote device. App. Br. 17. We agree with the Appellants. Although Hassel discloses a viewed column, Hassel fails to disclose communicating to the DVR that the selected program had been delivered from the content server to the remoted device. Merely indicating whether a particular show has been viewed or not viewed is not sufficient in teaching the above quoted claim language. Accordingly, for the reasons stated supra, we cannot sustain the Examiner’s rejection of claim 29. CONCLUSION The Examiner erred in finding that Hasek discloses to “compare the user profile and the library of programs to produce a list of programs,” as recited in independent claim 1. The Examiner did not err in finding that Hasek discloses “providing, to the remote device, a list of programs, each program on the list being . . . determined to be stored in the at least one content server” and “communicating with said DVR [to] periodically to obtain changes to said user profile,” as recited in independent claim 12. The Examiner did not err not in finding that Hasek discloses “determining that one or more of the programs. . . on a DVR is also stored on a content server,” as recited in independent claim 24, and similarly recited in independent claim 27. 12 Appeal 2014-001295 Application 12/104,031 The Examiner did not err in finding that Hasek discloses “wherein the DVR is a user’s virtual DVR,” as recited in dependent claims 22 and 23. The Examiner did not err in finding that the combination of Hasek and Hassell teaches or suggests “in response to said selection of said selected program, prompting the DVR to update said user profile on said DVR to indicate that said selected program has been watched,” as recited in dependent claim 19, and similarly recited in dependent claim 20. The Examiner erred in finding that the combination of Hasek and Hassell teaches or suggests to “communicate to the DVR that the selected program has been delivered from the content server to the remote device,” as recited in dependent claim 29. SUMMARY The Examiner’s decision to reject claims 12, 13, 14, 16, 19, 20, and 23—27 is affirmed. The Examiner’s decision to reject claims 1, 6, 7, 9-11, 21, 22, and 29 is reversed. 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-IN-PART 13 Copy with citationCopy as parenthetical citation