Ex Parte SINGH et alDownload PDFPatent Trial and Appeal BoardMar 4, 201612884548 (P.T.A.B. Mar. 4, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/884,548 09/17/2010 30594 7590 03/08/2016 HARNESS, DICKEY & PIERCE, PLC P.O. BOX 8910 RESTON, VA 20195 FIRST NAMED INVENTOR Jitender SINGH 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 29250-002491/US 6941 EXAMINER ALVAREZ, RAQUEL ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 03/08/2016 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): dcmailroom@hdp.com gyacura@hdp.com pshaddin@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JITENDER SINGH, JOSE LUIS DEL CERRO, DAVID BENCO, AJAY P ANDE, and JOSE DE FRANCISCO LOPEZ Appeal2014-002091 Application 12/884,548 1 Technology Center 3600 Before JENNIFER D. BAHR, STEFAN STAICOVICI, and GEORGE R. HOSKINS, Administrative Patent Judges. ST AI CO VICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jitender Singh et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-14. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. 1 According to Appellants, the real party in interest is Alcatel-Lucent. Appeal Br. 2 (filed Aug. 2, 2013). Appeal2014-002091 Application 12/884,548 INVENTION Appellants' invention relates to a "method and apparatus for transmitting high-definition video content to consumer storage devices." Spec. ,-r 2. Claims 1, 11, and 14 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A method for facilitating delivery of content from a content provider to a plurality of users connected to a network, the method comprising: receiving, at a content management server connected to the network, an indication of available content items from a content provider; providing an indication of the available content items from the content management server to the plurality of users, the content items including at least one of programming content items and advertisement content items; selecting a content item from among the available content items for delivery; determining, at the content management server, a group of users from among the plurality of users to receive the selected content item, the group of users being determined based on the selected item of content; causing the selected content item to be transmitted to the group of users via multicast streams. REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 1-10 under 35 U.S.C. § 102(a) as being anticipated byNagaraj (EP 2 068 557 Al, pub. June 10, 2009).2 2 The Examiner's reliance on 35 U.S.C. § 102(e) in making this rejection is improper as Nagaraj is a European patent publication. 2 Appeal2014-002091 Application 12/884,548 IL The Examiner rejected claim 14 under 35 U.S.C. § 102(b) as being anticipated by Fuchs (US 2007 /0211720 A 1, pub. Sept. 13, 2007). III. The Examiner rejected claims 11-13 under 35 U.S.C. § 103(a) as being unpatentable over Nagaraj and Fuchs. ANALYSIS The anticipation rejection based upon Nagaraj The Examiner finds that Nagaraj teaches all the elements of independent claim 1. Final Act. 2-3 (citing Nagaraj, Abstract, i-fi-146, 58, 59, and 61). Specifically, the Examiner finds that agent 535 or 802 ofNagaraj constitutes the claimed content management server that receives "an indication of available content items from a content provider" and "determin[ es] ... a group of users ... to receive the selected content item." See Final Act. 2-3; Ans. 2; see also Appeal Br. 36. Appellants argue that the Examiner's interpretation ofNagaraj's agent 535, 802 as the claimed content management server is in error because the agent in Nagaraj does not determine the group of users that are selected to receive the content items. See Appeal Br. 17-18; Reply Br. 6. Although we appreciate the Examiner's position that agent 802 of Nagaraj "schedules/selects videos/contents to deliver to the group of users" (see Ans. 2), nonetheless, Nagaraj fails to teach that agent 802 determines the group of users that are to receive the video content. More specifically, Nonetheless, because Nagaraj has a publication date of June 10, 2009 and the instant application claims priority to Nov. 10, 2009, Nagaraj is properly rejected under 35 U.S.C. § 102(a). 3 Appeal2014-002091 Application 12/884,548 Nagaraj teaches using broadcasters 540, rather than agent 535, 802, to determine the particular set of users that receive video content information and to transmit the video content information to a user computing device 595 associated with a user 590. See Nagaraj, i-fi-141, 42, 46, 55, and 59. At most, Nagaraj's agent 802 merely retrieves video content information 805 of available video content and provides it to broadcasters 540. See id. i-fi-155, 56. As such, because Nagaraj fails to teach a content management server, as called for by independent claim 1, we do not sustain the rejection of claim 1, and its dependent claims 2-10, under 35 U.S.C. § 102(a) as being anticipated by Nagaraj. The anticipation rejection based upon Fuchs Independent claim 14 requires, inter alia, "meta data representing at least one insertion point within the programming content." Appeal Br. 40. The Examiner finds that Fuchs teaches a method for displaying advertising content "including meta data representing at least one insertion point within the programming content." Final Act. 5 (citing Fuchs, Abstract, i-fi-19, 23, and 28). According to the Examiner, Fuchs's keys act as insertion points because each key is associated with a different section of the content. See id. at 8. The Examiner further finds that because Fuchs teaches stopping programming in order to receive an uplink message (advertisement), Fuchs teaches an "insertion point," as called for by claim 14. See Ans. 3 (citing Fuchs, i-fi-129, 47). In response, Appellants argue that, "Fuchs does not appear to teach metadata, included in programming content that indicates an insertion point 4 Appeal2014-002091 Application 12/884,548 which a client uses to suspend the display of programming content and begin display of advertising content." Appeal Br. 27. Appellants explain that the cited "keys" of Fuchs are used merely to decode encoded data and do not "necessarily include[] information indicating or representing an insertion point within programming data." Id. at 28. We agree with Appellants' position because Fuchs specifically teaches, "providing one or more keys required for decoding the file after the data is provided to the receiver." Fuchs, i-f 25 (emphasis added). Although we appreciate that the keys of Fuchs are associated with different sections of the transmitted content (see id. i-fi-128-29), nonetheless, the keys are used for decoding files and not as an "insertion point within the programming content," as called for by claim 14. We, thus, agree with Appellants that Fuchs's keys do not constitute metadata that include information regarding an insertion point, as called for by independent claim 14. See Reply Br. 12. Moreover, Appellants are correct that in contrast to claim 14, which requires a client unit receiving and storing advertising content, Fuchs's receivers transmit the uplink messages (which the Examiner finds to be the claimed advertising content). Id. at 8-10; Ans. 3; see also Fuchs, i-f 47. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 102(b) of claim 14 as being anticipated by Fuchs. The obviousness rejection based upon Nagaraj and Fuchs The Patent and Trademark Office ("PTO") satisfies its initial burden of production by "adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond." In re Jung, 637 5 Appeal2014-002091 Application 12/884,548 F.3d 1356, 1362 (Fed. Cir. 2011) (citing Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007). In other words, the PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in "notify[ing] the applicant [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application." 35 U.S.C. § 132. That section "is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection." Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). We agree with Appellants that, "the Office Action does not identify what in Nagaraj, or Fuchs, is being interpreted as corresponding to either the content management server or the transmission server recited in claim 11." See Appeal Br. 30. The Examiner merely quotes the claim language and cites to paragraph 34 ofNagaraj and paragraph 109 of Fuchs as evidence that the combined teachings of N agaraj and Fuchs teach all the limitations of claim 11. See Final Act. 6-7. We thus, find the Examiner's rejection to be so uninformative that it prevents Appellants from recognizing and seeking to counter the grounds for rejection and thus, fails to satisfy the initial burden of production so that Appellants were properly notified and able to respond. We thus agree with Appellants that the Examiner has failed to show that the combined teachings ofNagaraj and Fuchs render independent claim 11 unpatentable. See Appeal Br. 30-31. In view of the foregoing, we do not sustain the Examiner's rejection under 3 5 U.S. C. § 10 3 (a) of independent claim 11, and claims 12 and 13 6 Appeal2014-002091 Application 12/884,548 depending therefrom, as unpatentable over the combined teachings of Nagaraj and Fuchs. SUMMARY The Examiner's decision to reject claims 1-14 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation