Ex Parte Stefanik et al

Patent Trial and Appeal BoardSep 27, 2012

11467696 (P.T.A.B. Sep. 27, 2012)

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. 11/467,696 08/28/2006 John Stefanik 060123 (BLL0382US) 3953 36192 7590 09/27/2012 AT&T Legal Department - CC Attn: Patent Docketing Room 2A-207 One AT&T Way Bedminster, NJ 07921 EXAMINER THOMAS, JASON M ART UNIT PAPER NUMBER 2423 MAIL DATE DELIVERY MODE 09/27/2012 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 JOHN STEFANIK, PHILLIP WEEKS, CHARLES P. BRADLEY, E-LEE CHANG, TUCK SENG TAN, and KITT TUCKER ____________ Appeal 2011-006359 Application 11/467,6961 Technology Center 2400 ____________ Before MARC S. HOFF, CARLA M. KRIVAK, and ANDREW J. DILLON, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-21 (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is AT&T Intellectual Property I, L.P. Appeal 2011-006359 Application 11/467,696 2 STATEMENT OF THE CASE Appellants’ invention is a method, system, and computer program product for providing content preview services for Internet Protocol (IP)- based programming services. Programming content listings are displayed in a first panel of a display screen (Spec. 6). A content preview is displayed in a second panel of the display screen responsive to selection of the program descriptor (Spec. 8-9). The currently scheduled program is displayed in a program viewing panel representing a third panel of the display screen (Spec. 6). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method of providing content previewing services, comprising: associating a content preview with a program descriptor that identifies a program in an onscreen programming guide database of programming content listings, the programming content listings displayed in a first panel of a display screen of a program receiving device; and displaying the content preview in a second panel of the display screen of the program receiving device responsive to selection of the program descriptor, the content preview displayed simultaneously with a currently scheduled program, the currently scheduled program displayed in a program viewing panel representing a third panel of the display screen, the second panel separately located from the first panel on the display screen; wherein content previews displayed in the second panel of the display screen include at least one of: Appeal 2011-006359 Application 11/467,696 3 a list of programs scheduled to be recorded by a personal video recorder in communication with the program receiving device; and a list of programs recorded by a personal video recorder in communication with the program receiving device. REFERENCES Colsey US 2003/0005429 Al Jan. 02, 2003 Betz US 2003/0126605 Al Jul. 03, 2003 Ellis US 2004/0117831 Al Jun. 17, 2004 Young US 2005/0128353 Al Jun. 16, 2005 REJECTIONS The Examiner rejected claims 1, 6-8, 13, 14, 19, and 20 under 35 U.S.C. § 103(a) based upon the teachings of Colsey, Betz, and Ellis (Ans. 3- 6). The Examiner rejected claims 2-5, 9-12, 15-18, and 21 under 35 U.S.C. § 103(a) based upon the teachings of Colsey, Betz, Ellis, and Young (Ans. 6-8).2 ISSUE With respect to claims 1, 6-8, 13, 14, 19, and 20, Appellants argue that Ellis teaches that the selection of an item from a listing results in a new display screen window that includes program information for that selection (App. Br. 8). Appellants contend that, because Ellis does not present a single display screen during the course of content preview selection and 2 The Examiner’s Statement of Rejection refers to “Colsey … in view of Betz and Young.” Because the body of the Examiner’s rejection of these claims refers to Ellis, however (e.g., Ans. 6), we read the basis for the Examiner’s rejection to be Colsey in view of Betz, Ellis, and Young. Appeal 2011-006359 Application 11/467,696 4 presentation (id.), in contrast to the Specification (¶ [0027] cited; App. Br. 7), the Examiner’s combination of Colsey, Betz, and Ellis is erroneous. With respect to claims 2-5, 9-12, 15-18, and 21, variously dependent from claims 1, 8, and 14 respectively, Appellants argue only that Young fails to cure the deficiencies of Ellis (App. Br. 13). Appellants’ arguments present us with the following issue: Does the combination of Colsey, Betz, and Ellis teach or fairly suggest displaying content preview in a second panel of the display screen responsive to selection of the program descriptor, the content preview displayed simultaneously with a current scheduled program? PRINCIPLES OF LAW Section 103(a) forbids issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 407, (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”) Appeal 2011-006359 Application 11/467,696 5 Absent a showing of good cause, the Board is not required to address arguments in the Reply Brief that could have been presented in the principal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”3). ANALYSIS Appellants argue that the Examiner erred in rejecting the claims. Specifically, Appellants assert that Figure 1 and Specification paragraph [0027] disclose a single display screen being presented during the course of content preview selection and presentation; whereas Ellis teaches screen 280 listing all programs scheduled for recording, screen 290 providing a listing of web sites for selection, and a Program Information Screen that is displayed once a title is selected from screens 280 or 290 (App. Br. 8). Appellants argue that, because Ellis’s method contemplates the use of plural screens, it is not consistent with Appellants’ Specification, in which the content preview is accessed by the content preview application 118 and presented within the content preview panel 116 of the display screen of the program receiving device 104 (App. Br. 7). We are not persuaded by Appellants’ arguments. First, Appellants are arguing a feature that is discussed in the Specification but not claimed in the way Appellants suggest. There is no language in the independent claims (claims 1, 8, or 14) affirmatively requiring the use (and re-use) of a single portion of a display screen for the entire content preview process. Second, the Examiner relies on Ellis merely to teach the feature of displaying a list of 3 The “informative” status of this opinion is noted at the following Board website: http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp. Appeal 2011-006359 Application 11/467,696 6 programs recorded and scheduled to be recorded by a digital video recorder in communication with a program receiving device (Ans. 5). The Examiner does not contemplate the bodily incorporation of all of Ellis’s content preview steps and displays into the system of Colsey. The Examiner’s rejection explains that Colsey is relied upon for the underlying concept of content preview in a second panel of the display screen (Ans. 4), a position that is not rebutted by Appellants in their Appeal Brief. Last, Appellants’ Reply Brief argument that the Examiner failed to address the limitation that “the second panel [is] separately located from the first panel on the display screen” (Reply Br. 3) is not entitled to consideration because the argument was not made in the Appeal Brief, and is not responsive to a new point of argument in the Examiner’s Answer. See Borden, 93 USPQ2d at 1473-74. We conclude that the Examiner did not err in rejecting claims 1, 6-8, 13, 14, 19, and 20 as being unpatentable over Colsey in view of Betz and Ellis. We will sustain the Examiner’s § 103 rejection. We will also sustain the Examiner’s § 103 rejection of claims 2-5, 9- 12, 15-18, and 21 as being unpatentable over Colsey in view of Betz, Ellis, and Young for the same reasons. Appellants argued only that Young does not cure the deficiencies of Ellis. As stated supra, we do not agree that Ellis is deficient with respect to the claimed invention. CONCLUSION The combination of Colsey, Betz, and Ellis fairly suggests displaying content preview in a second panel of the display screen responsive to Appeal 2011-006359 Application 11/467,696 7 selection of the program descriptor, the content preview displayed simultaneously with a current scheduled program. DECISION The Examiner’s decision rejecting claims 1-21 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)(2010). AFFIRMED Llw/peb