Ex Parte SINGH et al

Patent Trial and Appeal Board

Mar 4, 2016

12884548 (P.T.A.B. Mar. 4, 2016)

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.
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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).
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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
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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
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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
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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
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