Ex Parte Schwartz et al

Patent Trial and Appeal Board

Mar 31, 2017

12104031 (P.T.A.B. Mar. 31, 2017)

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;
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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?
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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
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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.
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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
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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.
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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
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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
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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.
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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.
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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.
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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
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