Ex Parte Sharkey et al

Patent Trial and Appeal BoardNov 12, 2014

12047406 (P.T.A.B. Nov. 12, 2014)

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. 12/047,406 03/13/2008 Jeffrey L. Sharkey PD-208015 2969 20991 7590 11/12/2014 THE DIRECTV GROUP, INC. PATENT DOCKET ADMINISTRATION CA / LA1 / A109 2230 E. IMPERIAL HIGHWAY EL SEGUNDO, CA 90245 EXAMINER SHELEHEDA, JAMES R ART UNIT PAPER NUMBER 2424 MAIL DATE DELIVERY MODE 11/12/2014 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 JEFFREY L. SHARKEY, TAM T. LEMINH, ALISTAIR E. JEFFS, ROBERT G. ARSENAULT, HUY Q. TRAN, TOMMI J. ITEN, DAVID ERIC SHANKS, and ERIC J. BENNETT ____________ Appeal 2012-007708 Application 12/047,4061 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, KIMBERLY J. McGRAW, and NATHAN A. ENGELS, Administrative Patent Judges. McGRAW, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–5, 7–10, 12–17, and 19–24 under 35 U.S.C. §103(a) as being unpatentable over Ellis (US 7,370,343 B1, May 6, 2008) in view of Bahnck et al. (“Bahnck”) (US 2007/0226765 A1, Sept. 27, 2007), and McCoskey et al. (“McCoskey”) (US 2003/0028889 A1, Feb. 6, 2003). Answer 4–13. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is The DIRECTV Group, Inc. of El Segundo, California. Appeal Br. 2. Appeal 2012-007708 Application 12/047,406 2 BACKGROUND Appellants’ invention is directed to methods for redirecting a receiving device, such as a TV set top box, to a different channel in the event of a programming blackout, as well as to receiving devices and systems performing such methods. Spec. ¶¶ 1, 3; Appeal Br. 14–18, Claim App’x. Among other things, the claimed invention directs the set top box to change from the blacked out channel to another channel offering an equivalent program. Appeal Br. 14–18, Claim App’x. Claim 1 is the focus of Appellants’ brief and reproduced below: 1. A method of operating a receiving device comprising: storing program data in the receiving device; storing receiving device location data corresponding to the receiving device location in the receiving device; tuning the receiving device to a first channel having a first program; determining the first channel is a blacked out channel at the receiving device in response to comparing the receiving device location data to the program data; searching the program data for a second program equivalent to the first program; determining a second channel associated with the second program; tuning the receiving device to the second channel; and during the steps of searching and determining and prior to tuning, generating a searching on-screen display indicating the receiving device is searching for another channel. Appeal Br. 14, Claim App’x (limitations at issue italicized). Appeal 2012-007708 Application 12/047,406 3 ISSUES Appellants contend that the cited references do not teach or suggest the following limitations of independent claim 1: 1. “during the steps of searching and determining and prior to tuning, generating a searching on-screen display indicating the receiving device is searching for another channel,” and 2. “searching the program data for a second program equivalent to the first program.” Appeal Br. 4–11. ANALYSIS “during the steps of searching and determining and prior to tuning, generating a searching on-screen display indicating the receiving device is searching for another channel” In essence, Appellants argue that because McCoskey does not teach (a) “during the steps of searching and determining and prior to tuning,” and Ellis does not teach (b) “generating a searching on-screen display indicating the receiving device is searching for another channel,” that the Examiner erred in finding claim 1 obvious over the cited art. See Appeal Br. 5–7. These arguments are not persuasive as one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants’ arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and is therefore ineffective to rebut the Examiner’s prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary Appeal 2012-007708 Application 12/047,406 4 reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”) (citations omitted, emphasis added). This reasoning is applicable here. In the Reply Brief, Appellants raise for the first time that combining Ellis and McCoskey would render Ellis’s system unsatisfactory for its intended purpose. Reply Br. 4. However, Appellants have not presented good cause for why this new argument was not presented earlier. The proposed modification of Ellis with the teachings of McCoskey was set forth in the Final Answer. Final Ans. 2–3. A reply brief is not an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative); see also Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (informative) (holding that an argument of no motivation to combine the references that was presented in the reply brief was untimely and would not be considered absent a showing of good cause). Nonetheless, we have considered Appellants’ argument and find it unpersuasive. Appellants assert that Ellis teaches identifying potential blackouts and generating blackout data in advance of a user tuning to the potentially blacked out channel. Appellants contend that if the system displays a “performing search bug” as taught by McCoskey, the user would have an unsatisfactory viewing experience as the user may be constantly bombarded with the “performing search bug” despite never actually tuning to a channel that is blacked out. Reply Br. 4–5. Appeal 2012-007708 Application 12/047,406 5 The Examiner concluded that it would have been obvious to one of skill in the art to modify the system of Ellis and Bahnck to include an on- screen display indicating that the receiving device is searching for another channel, as taught in McCoskey, so that users would understand that the system is processing their search request. Answer 5–6, citing Ellis 21:22- 22:21. Ellis teaches use of an on screen display, a “flip bar,” that displays blackout information when a user tunes to a channel that has been blocked out. Ellis 21:48–22:21. Appellants have not articulated a reason why one of ordinary skill in the art would not display the performing search bug, as taught by McCoskey, on the flip bar, as taught by Ellis, so as to not bombard the user with display of the performing search bug. As such, there is insufficient evidence to support the contention that the combination would render Ellis’s system unsatisfactory for its intended purpose. Thus, for this additional reason, we do not find the arguments set forth in the Reply Brief to be persuasive. “searching the program data for a second program equivalent to the first program” Appellants also argue that the Examiner erred in finding that Ellis teaches “searching the program data for a second program equivalent to the first program.” Appeal Br. 7–11. Appellants assert that Ellis merely teaches that in the case of an affiliate-protection blackout, the equipment can automatically tune to a local affiliate if the user selects the national affiliate. Appeal Br. 9, citing Ellis 26:44–27:17. We disagree that the teachings of Ellis are so limited. Rather, Ellis expressly teaches that the program guide may automatically tune to a local affiliate channel that is showing the program that is blacked out on the Appeal 2012-007708 Application 12/047,406 6 national channel. Answer 5, 13–15; Ellis 27:1–3 (stating the program guide may automatically “tune to the local affiliate channel showing the blacked- out program when the program listing for the program on the national channel is selected”) (emphasis added). Similarly, we disagree with Appellants’ argument that Ellis’ teachings regarding replacement media “is not akin to searching program data for equivalent programming.” Appeal Br. 10–11. Ellis teaches that replacement media includes the blacked-out program that is being shown on a different channel. Ellis 21:42–45 (“the program guide may recommend replacement media that is a different showing of a blacked-out program (i.e., available on a different channel or at a different time)”) (emphasis added). Thus, we agree with the Examiner’s findings that Ellis teaches “searching the program data for a second program equivalent to the first program.” Answer 5, 13– 15. Appellants argue that claims 2–5, 7–10, and 12 are also allowable by virtue of their dependence from claim 1. Appeal Br. 11. As we have sustained the Examiner’s rejection of claim 1, we do not find this argument persuasive. For the above reasons, we sustain the Examiner’s rejection of claims 1–5, 7–10, and 12 as unpatentable under 35 U.S.C. § 103(a) over Ellis, Bahnck, and McCoskey. Rejection of Claims 13–17 and 19–24 under 35 U.S.C. § 103(a) over Ellis, Bahnck and McCoskey Appellants assert that independent claim 13 is similar to claim 1 and that the arguments presented for claim 1 also apply to claim 13 and its dependent claims 14–17 and 19–24. Appeal Br. 11–12. Appellants do not Appeal 2012-007708 Application 12/047,406 7 advance any additional or independent arguments regarding the patentability of claim 13 and its dependent claims. See id. As we have sustained the Examiner’s rejection of claim 1, we do not find this argument persuasive and sustain the Examiner’s rejection of claims 13–17 and 19–24 as unpatentable under 35 U.S.C. § 103(a) over Ellis, Bahnck, and McCoskey. CONCLUSION For the above reasons, we sustain the Examiner’s rejection of claims 1–5, 7–10, 12–17, and 19–24. DECISION The Examiner’s decision rejecting claims 1–5, 7–10, 12–17, and 19–24 under 35 U.S.C. § 103(a) over Ellis, Bahnck, and McCoskey 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)(1)(iv). AFFIRMED msc