Ex Parte Sie et alDownload PDFPatent Trial and Appeal BoardMar 31, 201713087225 (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. 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 1100 Peachtree Street TELAN, MICHAEL R Suite 2800 ART UNIT PAPER NUMBER Atlanta, UA 5U5UV 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): 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 2 Appeal 2017-000211 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. 3 Appeal 2017-000211 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 4 Appeal 2017-000211 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. 5 Appeal 2017-000211 Application 13/087,225 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. 6 Appeal 2017-000211 Application 13/087,225 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). 7 Appeal 2017-000211 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 8 Copy with citationCopy as parenthetical citation