Ex Parte ZHAO et al

Patent Trial and Appeal BoardFeb 19, 2016

12724361 (P.T.A.B. Feb. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 121724,361 03/15/2010 HUI ZHAO 124538 7590 02/23/2016 Cox Communications, Inc, c/o Next IP Law Group LLP Two Ravinia Suite 500 Atlanta, GA 30346 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. 33020-RA32 7144 EXAMINER THOMAS, JASON M ART UNIT PAPER NUMBER 2423 NOTIFICATION DATE DELIVERY MODE 02/23/2016 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): bgunter@nextiplaw.com bbalser@nextiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HUI ZHAO and CRAIG SMITHPETERS Appeal2014-002077 Application 12/724,361 Technology Center 2400 Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and DENISE M. POTHIER, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-002077 Application 12/724,361 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-31, which constitute all the claims pending in this application (App. Br. 2): 1 Claim 21 stands rejected under 35 U.S.C. Â§101 for being directed to non-statutory subject matter. Final Act. 4. Claims 1-21, 23-26, and 28-31 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Booth (US 2008/0010652 Al; published Jan. 10, 2008) and Michaud (US 2008/0178252 Al; published July 24, 2008). Final Act. 5-15. Claims 22 and 27 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Booth, Michaud, and Reusch (US 5, 156,027; issued Oct. 20, 1992). Final Act. 15-16. We have jurisdiction under 35 U.S.C. Â§ 6(b). We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). We affirm. 1 Throughout this opinion, we refer to (1) the Final Rejection mailed December 18, 2012 ("Final Act."), (2) the Advisory Action mailed March 1, 2013 ("Adv. Act."), (3) the Appeal Brief filed July 1, 2013 ("App. Br."), (4) the Examiner's Answer mailed September 18, 2013 ("Ans."), and (5) the Reply Brief filed November 12, 2013 ("Reply Br."). 2 Appeal2014-002077 Application 12/724,361 SUMMARY OF THE INVENTION Appellants' invention provides password control for multiple-room digital video recording. See generally Abstract. Independent claim 1 is illustrative of the claimed subject matter: 1. A multi-room digital video recorder (MR-DVR), compnsmg: memory for storing data; and a processor, coupled to the memory, for providing capture and presentation of content, the processor provisioning an interface for managing a network control parameter for controlling device access, the interface providing communication with additional non-MR-DVRs to reset the network control parameter for the non-MR-DVRs m communication with the MR-DVR and to coordinate management of the network control parameter between the MR- DVR and non-MR-DVRs. THE REJECTION TJl'JDER 35 U.S.C. Â§ 101 The Examiner finds that the computer-readable storage medium recited in independent claim 21 covers transitory media and, therefore, is ineligible under 35 U.S.C. Â§ 101. Final Act. 4. The Examiner suggested amending the claim to recite "non-transitory" to overcome this rejection. Id. In response to the Final Rejection, Appellants submitted an amendment to add the words "non-transitory" to finally rejected claim 21. See Claims, filed March 1, 2013. Amendments to finally rejected claims---even those amendments that reduce issues on appeal-are not entered as a matter of right. See 37 C.F.R. Â§ 1.116; see also MPEP Â§ 714.13, 9th ed. (Nov. 2015). Here, the Examiner declined to exercise his discretionary authority and refused to 3 Appeal2014-002077 Application 12/724,361 enter the amendment to claim 21. Adv. Act, form PTOL-303 (checking box 7(a), which states that "[f]or the purposes of appeal, the proposed amendment(s) will not be entered"). In the Answer, the Examiner also states that every ground of rejection in the Final Rejection is maintained. Ans. 2. Appellants appeal from the last decision of the Examiner. Notice of Appeal, filed April 18, 2013. So while Appellants attempted to present amended claim 21 with the status "Currently Amended" (App. Br. 24--25, Claims App'x) (attempting to amend the claim to add the word "non- transitory," as suggested by the Examiner), that proposed amendment was not entered. Nor did Appellants provide any arguments in response to the Â§ 101 rejection. See id. at 5-17; Reply Br. 2-8. Because claim 21 stands rejected under Â§ 101, because Appellants' after-final claim amendment was not entered, and because Appellants' Briefs do not contest the Â§ 101 rejection, we summarily sustain the Â§ 101 rejection without reaching its merits. See Hyatt v. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) (explaining that when appellant fails to contest a ground of rejection, the Board may affirm the rejection without considering its substantive merits); see also 37 C.F.R. Â§ 41.37(c)(l)(iv); MPEP Â§ 1205.02: An appellant's brief must be responsive to every ground of rejection stated by the examiner that the appellant is presenting for review in the appeal. If a ground of rejection stated by the examiner is not addressed in the appellant's brief, that ground of rejection will be summarily sustained by the Board. 4 Appeal2014-002077 Application 12/724,361 THE OBVIOUSNESS REJECTION OVER BOOTH AND MICHAUD Contentions The Examiner finds that Booth teaches every element of claim 1 except for the recited interface to reset the network-control parameter. Final Act. 5---6. The Examiner further finds, though, that Michaud provides the recited interface. Id. at 6-7 (citing Michaud i-fi-153-54, 72, 79). According to the Examiner, Michaud's terminal-generated password is the recited network-control parameter, and Figure 9 shows an interface displaying networked non-MR-DVRs. See Ans. 4. The Examiner points out that Michaud's process involves two passwords: a terminal-generated password and a user-generated password. Id. at 3. The Examiner states that distributing the terminal-generated password corresponds to the recited reset. Id. at 3--4. The Examiner concludes that it would have been obvious to use Michaud's reset in Booth's system. Final Act. 6-7. Appellants argue that the Booth-Michaud combination has the network control parameters reset at the individual devices. App. Br. 7. According to Appellants, Michaud does not perform the password installation through the MR-DVR, as recited in claim 1. Id. (citing Michaud i154). Rather, according to Appellants, Michaud's terminal- generated password is generated at the terminal itself, not by another terminal. Reply Br. 2-3. Issue Has the Examiner established by a preponderance of the evidence that Booth and Michaud collectively teach or suggest resetting "the network control parameter for the non-MR-DVRs in communication with the MR- DVR," as recited in claim 1? 5 Appeal2014-002077 Application 12/724,361 Analysis We are not persuaded that the Examiner erred in rejecting claim 1. As discussed below, Appellants' above-noted principal argument of the Appeal Brief does not squarely address the Examiner's rationale. Furthermore, the record does not support Appellants' above-noted second argument of the Reply Brief. Michaud discloses a two-part process. In the first part, Michaud' s user inputs a password at each terminal. Michaud i-f 79; Fig. 12, step 1213. From these "user-generated passwords," Michaud forms a temporary network. Id. i-f 80; Fig. 12, step 1220. In the second part, one of the connected terminals generates a password. Id. i-f 81; Fig. 12, step 1225. This terminal-generated password replaces the user-generated password in each connected terminal device. Id. i-f 82; Fig. 12, step 1231. With the terminal- generated password subsequently installed on each terminal, Michaud reforms the network. Id. ,-r 83; Fig. 12, step 1246. To address the limitation at issue, the Examiner relies on the second part of Michaud's process (Adv. Act; Ans. 3), but Appellants' argument is premised on the process's first part (App. Br. 7 (citing Michaud i-f 54)). For example, Appellants argue that Michaud only enters a new user-generated password at the individual device. App. Br. 15. To support this argument, Appellants quote a discussion from the user-generated password installation in the first part of the process. Id. at 7 (citing Michaud i-f 54). But this argument does not squarely address the Examiner's reasoning (Adv. Act. 3- 4; Ans. 3) that relies on the distributed terminal-generated password (Michaud, Fig. 12, step 1231 ), which replaces this earlier-generated user 6 Appeal2014-002077 Application 12/724,361 password (id., step 1236). Accordingly, Appellants' argument (App. Br. 7 (citing Michaud i-f 54)) is unpersuasive. Furthermore, Michaud's description of creating and distributing the terminal-generated password (Michaud i-fi-1 81-82) does not support Appellants' second argument (Reply Br. 2-3). According to Appellants, Michaud's terminal-generated password is generated at the terminal itself, not by another terminal. Id. But Michaud's user selects only one terminal device to create the terminal-generated password. Michaud i-f 81. And Michaud distributes this terminal-generated password to each terminal device on the temporarily-secured network. Id. i-f 82. That is, one terminal will generate the terminal-generated password itself-namely, the terminal selected by the user. Id. i-f 81; see also id. i-f 65 (describing the user-interface to carry out this function). Like the recited non-MR-DVRs, Michaud's remaining terminals do not generate this password. Rather, these terminals receive the terminal-password from another terminal over the network (id. i-f 82}---contrary to Appellants' argument (Reply Br. 2-3). For the foregoing reasons, Appellants have not persuaded us of error in the Examiner's obviousness rejection of claim 1. Accordingly, we will sustain the Examiner's rejection of that claim, as well as the rejection of dependent claims 2--4 and 23-26, not argued separately with particularity.2 Likewise, we will sustain the Examiner's obviousness rejection of claims 5, 15, and 21. Appellants present similar arguments regarding Booth and Michaud having the network control parameters reset at the individual 2 Claims 23-26 depend from claim 1 and not from claim 21 as misstated by Appellants (App. Br. 16). 7 Appeal2014-002077 Application 12/724,361 devices. See App. Br. 8-17. Likewise, Appellants reiterate the argument that Michaud's terminal-generated password is generated at the terminal itself. Reply Br. 3-7. We are not persuaded by these arguments, however, for the reasons discussed previously. We, therefore, sustain the rejection of claims 5, 15, and 21, as well as the rejection of dependent claims 6-14, 16- 20, and 28-31. THE OBVIOUSNESS REJECTION OVER BOOTH, MICHAUD, AND REUSCH We likewise will sustain the Examiner's obviousness rejection of claims 22 and 27 over Booth, Michaud, and Reusch. Appellants have not particularly pointed out errors in the Examiner's reasoning as it relates to the limitations of these claims, but, instead, merely reiterate the same arguments with respect to the alleged deficiencies of Booth and Michaud in connection with independent claim 1. 3 In particular, Appellants argue that Reusch does not cure the deficiencies of Booth and Michaud. App. Br. 17. We are not persuaded by these arguments, however, for the same reasons discussed above. We, therefore, sustain the rejections of claims 22 and 27. DECISION The Examiner's decision rejecting claims 1-31 is affirmed. 3 Claims 22 and 27 depend from claims 1 and 5, respectively, and not from claim 21, as suggested by Appellants. See App. Br. 17. 8 Appeal2014-002077 Application 12/724,361 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 9