Ex Parte Sie et al

Patent Trial and Appeal Board

Mar 31, 2017

13087225 (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.
13/087,225 04/14/2011 John J. Sie 85312-000920US-804298 5773
20350 7590 04/04/2017
KTT PATRTrK TOWNSFND fr STOrKTON T T P
EXAMINER
Mailstop: IP Docketing - 22
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TELAN, MICHAEL R
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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):
ipefiling@kilpatricktownsend.com
jlhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN J. SIE, GANESH BASAWAPATNA,
MARTIN F. SABRAW, and GREGORY R. DEPREZ
Appeal 2017-000211
Application 13/087,225
Technology Center 2400
Before: BRADLEY W. BAUMEISTER, KALYAN K. DESHPANDE, and
JOHN R. KENNY, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-000211
Application 13/087,225
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from rejections of claims
1—9 and 11—16, which constitute all pending claims. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
According to Appellants, their invention relates to delivering a
program to an individual business or residence. Spec. 2. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for distributing programming, the method
comprising:
transmitting a set of programs in real time according to a
schedule of programming;
identifying a subset of programs of the set of programs
for which associated content is available for a user to pause,
rewind, and fast-forward the associated content during playback
of the associated content;
transmitting one or more notification symbols to be
displayed to the user in an interactive guide to indicate that the
user is able to pause, rewind, and fast-forward each of the
subset of programs during playback of the associated content,
wherein:
the interactive guide comprises a plurality of linear
graphical elements representing at least some of the set of
programs;
the at least some of the set of programs comprises:
at least one program in the subset of programs; and
at least one program not in the subset of programs;
at least one linear graphical element representing the at
least one program in the subset of programs comprises at least
one of the one or more notification symbols indicating that the
user is able to pause, rewind, and fast-forward the at least one
program in the subset of programs; and
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Application 13/087,225
at least one linear graphical element representing the at
least one program not in the subset of programs does not
comprise any of the one or more notification symbols such that
the at least one program not in the subset of programs is
visually distinguished from the at least one program in the
subset of programs and indicating that the user is not able to
pause, rewind, and fast-forward the at least one program not in
the subset of programs;
transmitting the interactive guide selectable by the user to
initiate playback of the associated content;
receiving an indication that a pause, rewind, or fast-
forward command has been received from a user during
playback of the associated content of a first program; and
determining, in response to receiving the indication,
whether the pause, rewind, or fast-forward command is
authorized.
REFERENCES
Story US 5,673,430 Sept. 30, 1997
De Lang US 6,020,912 Feb. 1,2000
Gordon US 6,314,573 B1 Nov. 6, 2001
Yuen US 2002/0047946 A1 Apr. 25, 2002
Ellis US 2004/0226042 A1 Nov. 11,2004
REJECTIONS
Claims 1—7, 9, and 11—15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ellis, De Lang, and Yuen. Final
Act. 2.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Ellis, De Lang, Yuen, Gordon, and Story. Final Act. 19.
Claim 16 stands rejected under35 U.S.C. § 103(a) as unpatentable
over the combination of Ellis, De Lang, Yuen, and Gordon. Final Act. 21.
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Application 13/087,225
CONTENTIONS AND ANALYSIS
Appellants note claim 1 is limited to a method with (i) multiple
programs in a guide with a plurality of linear graphical elements (a linear
guide) that allow a user to pause, rewind, and fast-forward programs
(“multiple-programs limitation”) and (ii) a notification symbol in the linear
guide identifying the programs that allow the user to pause, rewind, and fast-
forward (“symbol limitation”). Br. 7. Appellants argue the combination of
Ellis, De Lang, and Yuen does not teach or suggest these two limitations.
Id. at 7—8. Appellants further argue that the cited prior art cannot be
combined to reach these limitations because (i) doing so would destroy the
intended purpose of Yuen and (ii) combining Ellis, De Lang, and Yuen
would serve no rational purpose. Id. at 8—9.
We, however, are not persuaded by these arguments. Instead, we
agree with, and adopt as our own, the Examiner’s findings of facts and
conclusions as set forth in the Answer and in the action from which this
appeal is taken. We have considered Appellants’ arguments, but do not find
them persuasive of error. We provide the following discussion primarily for
emphasis.
In brief summary, Ellis, De Lang, and Yuen have the following
disclosures. Ellis teaches an interactive guide with video-on-demand
programs with icon 75, the icon indicating a particular video-on-demand
program is actually available on demand. Ans. 7; Ellis Fig. 6B, || 52, 54—
56. De Lang teaches a video-on-demand system in which content is
available for a user to pause, rewind, and fast-forward programs, which is
provided on a selective basis (i.e., when a user pays for it for a particular
program). Ans. 8; De Lang Fig. 3, 4:3—8. De Lang uses icon (pictogram) 31
to display pause functionality, icon 35 to display rewind functionality, and
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Application 13/087,225
icons 33 and 34 to display fast forward functionality. De Lang Fig. 3, 3:13—
31. Yuen teaches an interactive guide with a plurality of linear graphical
elements displaying programs with on-screen icons 38 indicating programs
have available soundbites. Ans. 8—9; Yuen Figs. 3—5, Tflf 15—20. The
Examiner finds that the combination of these disclosures teach or suggest the
disputed limitations. Ans. 7—20.
Appellants argue De Lang does not teach or suggest the multiple-
programs limitation because De Lang only teaches a single linear
representation of a channel set aside for video-on-demand programs. Br. 7—
8. We are not persuaded by this argument, however, because it is not
directed to the Examiner’s actual rejection, which relies on, inter alia, the
linear guides of Ellis and Yuen. Ans. 7—9; In re Mouttet, 686 F.3d 1322,
1332-33 (Fed. Cir. 2012); In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
Appellants argue Ellis, De Lang, and Yen do not teach or suggest the
symbol limitation of claim 1 because De Lang’s pause, rewind, and fast-
forward functionality is available for purchase for every program and can
only be ordered one program at a time. Br. 7—8. Appellants continue,
therefore, that combining De Lang’s functionality with Yuen’s linear guide
would display a symbol for only one program where pause, rewind, and fast-
forward functionality is available for purchase, rather than being already
available. Id. Further, Appellants argue that Yuen’s disclosed icon only
indicates the presence of a sound clip and that difference between Yuen and
other references would prevent the combination. Id. We are not persuaded
by these arguments because they are directed to a bodily combination of the
references, rather than of their teachings. Ans. 2—20; Mouttet, 686 F.3d at
1332-33.
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Appellants also argue the references cannot be combined because the
intended purpose of the icons in Ellis and Yuen is to control access to
additional content, whereas the recited icons in claim 1 indicate pause,
rewind, and fast-forward functionality. Br. 8—9. Therefore, according to
Appellants, modifying Yuen’s icons to indicate pause, rewind and fast-
forward functionality would destroy Yuen’s intended purpose. Id.
We, however, do not find Yuen’s intended purpose to be so narrow.
Yuen discloses a linear interactive guide with icons indicating added
functionality for select programs (the presence of associated sound clips).
Yuen Fig. 4. Yuen would still provide such an interactive guide with the
proposed modification, where its icons would indicate the added
functionality of pause, rewind, and fast-forwarding. Mouttet, 686 F.3d at
1332-33.
Further, as the Examiner finds, and Appellants do not dispute, one
skilled in the art readily could have made the proposed modification to Yuen
using known methods with predictable results without destroying Yuen’s
operability. Ans. 17. Accordingly, we are not persuaded that the
Examiner’s combination would destroy Yuen’s intended purpose.
Appellants also argue the combination of Yuen, De Fang, and Ellis
would serve no rational purpose because every program in De Fang is
eligible for purchase of pause, rewind, and fast-forward functionality and,
therefore, every program in the combination would include an icon
indicating that eligibility. Br. 9. Alternatively, Appellants argue none of the
programs would be associated with an icon because users would have
already purchased the pause, rewind, and fast-forward functionality and,
therefore, users would not need to know what they already purchased. Id.
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We are not persuaded by these arguments because they also are
directed to a bodily combination of the references. The Examiner does not
propose bodily combining code for De Lang’s pause, rewind, and fast-
forward functionality with code for Yuen’s and Ellis’s interactive guides.
Ans. 2—20. The Examiner proposes combining De Lang’s teachings of
pause, rewind, and fast-forward functionality with Yuen and Ellis’s
teachings of interactive guides that have icons demonstrate programs having
added functionality. Id. The Examiner has set forth a rational purpose for
that combination, for which Appellants have not demonstrated error. Ans.
2-20.
Furthermore, it is of no moment that, according to Appellants, “every
VOD program was eligible for pause, rewind and fast-forward
functionality.” Br. 8. Providing an indication that such functionality is
available for all VOD programs would distinguish the VOD programs from
regular, non-VOD program for which such functionality is unavailable.1
Appellants present the same arguments for claims 2—9 and 11—16 as
those discussed above for claim 1. Br. 6.
Having considered the arguments made by Appellants and finding that
none demonstrate error by the Examiner, we sustain the Examiner’s
rejections for all claims. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011);
Ex Parte Frye, 94 U.S.P.Q.2d 1072, 1075 (BPAI) (precedential).
1 Appellants do not dispute that pause, rewind, and fast-forward
functionality would be unavailable for non-VOD programs. See Ex Parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (clarifying that
the PTAB reviews the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon). See also Hyatt v. Dudas, 551, F.3d 1307, 1313—14 (Fed.
Cir. 2008) (the Board may treat arguments Appellant failed to make for a
given ground of rejection as waived).
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Application 13/087,225
DECISION
We affirm the rejections of claims 1—9 and 11—15.
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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