Time Warner Cable Enterprises LLC et al.

Patent Trials and Appeals BoardNov 18, 2020

15041747 - (D) (P.T.A.B. Nov. 18, 2020)

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. 15/041,747 02/11/2016 John B. Carlucci 6121-3ACIP/CON2/382396 2115 27799 7590 11/18/2020 COZEN O'CONNOR 277 PARK AVENUE , 20TH FLOOR NEW YORK, NY 10172 EXAMINER HANCE, ROBERT J ART UNIT PAPER NUMBER 2423 NOTIFICATION DATE DELIVERY MODE 11/18/2020 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): patentdocket@cozen.com patentsecretary@cozen.com patentsorter@cozen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte JOHN B. CARLUCCI and MICHAEL L. DeHART1 ________________ Appeal 2019-003406 Application 15/041,747 Technology Center 2400 ________________ Before BRADLEY W. BAUMEISTER, ROBERT J. WEINSCHENK, and PHILLIP A. BENNETT, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–29 and 31–41. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). The Board conducts a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). We AFFIRM. 1 Appellant identifies Time Warner Cable Enterprises LLC as the real party in interest. Appeal Brief filed January 7, 2019 (“Appeal Br.”), 2. Appeal 2019-003406 Application 15/041,747 2 CLAIMED SUBJECT MATTER Appellant describes the present invention as follows: A method of operating a receiving device coupled to a display device at a user location is disclosed, comprising programming the receiving device to record a program and recording the program based, at least in part, on at least one segmentation message in a program stream. In one example, the receiving device, which may be a set-top terminal, for example, is coupled to a display device, such as a television, at a user location. Devices are disclosed, as well. Abstract. Independent claim 1, reproduced below, illustrates the subject matter of the appealed claims: 1. A method of operating a set-top terminal comprising: receiving instructions to record a selected one of at least one program to be received in a program signal stream, starting at a first program start clock time, from a program listing, by the set-top terminal separate from a television; after receiving the instructions, receiving the program signal stream comprising at least the selected program and at least one message defining a second program start time for the selected program, in units of time with respect to progression of the program signal stream; identifying the at least one message in the received program stream; comparing the first program start clock time of the selected program with the second program start time, in units of time, defined by the at least one message; and starting to record the selected program based, at least in part, on the second program start time, if the second program start time is different from the first program start clock time. Appeal Br. 19 (Claims App.). Appeal 2019-003406 Application 15/041,747 3 STATEMENT OF THE REJECTIONS Claims 1–29 and 31–41 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–30 of Carlucci (US 8,443,383 B2; issued May 14, 2013). Final Act. 8.2, 3 Claims 1–29 and 31–41 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–24 of Carlucci (US 9,264,761 B2; issued Feb. 16, 2016). Final Act. 8. Claims 1–5, 9–13, 17–23, 27–29, 31, 32, and 36–41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Horowitz (US 2004/0078817 A1; published Apr. 22, 2004) and Grooters (US 6,549,718 B1; issued Apr. 15, 2003). Final Act. 9–14. Claims 6, 7, 14–16, 24, 25, and 33–35 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Horowitz, Grooters, and Yuen (US 6,091,884; issued July 18, 2000). Final Act. 14–16. Claims 8 and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Horowitz, Grooters, Yuen, and Young (US 5,991,498; issued Nov. 23, 1999). Final Act. 16. 2 Rather than repeat the Examiner’s positions and Appellant’s arguments in their entirety, we refer to the above mentioned Appeal Brief, as well as the following documents for their respective details: the Final Action mailed August 3, 2018 (“Final Act.”); the Examiner’s Answer mailed January 28, 2019 (“Ans.”); and the Reply Brief filed March 28, 2019 (“Reply Br.”). 3 The Final Action states that claim 30 is included in the two double patenting rejections and the obviousness rejection over Horowitz and Grooters. Final Act. 8–9. But claim 30 has been canceled. Appeal Br. 2. Appeal 2019-003406 Application 15/041,747 4 THE DOUBLE PATENTING REJECTIONS As noted above, the Examiner rejects claims 1–41 on the ground of nonstatutory double patenting over Carlucci ’383 and Carlucci ’761. Final Act. 8. Appellant asserts that only claims 1–37—as opposed to claims 1– 41—are rejected for double patenting. Appeal Br. 2. But regardless, Appellant does not appeal the double-patenting rejections. Id. Appellant, instead, states that a terminal disclaimer will be filed when allowable subject matter is identified. Id. Also, claim 30 has been canceled. Id. Accordingly, we summarily affirm the rejections of claims 1–29 and 31–41 on the grounds of nonstatutory double patenting. THE OBVIOUSNESS REJECTIONS Examiner’s Findings and Conclusions The Examiner finds that Horowitz discloses most of the limitations of independent claim 1. Final Act. 9–10 (citing Horowitz ¶¶ 21, 26, 29, 34–37, 48, 51; FIGs. 1, 4. 5). The Examiner finds, though, “Horowitz fails to disclose that the message defines a second program start time in units of time with respect to the progression of the program signal stream” (id. at 10). The Examiner further finds that Grooters teaches this additional limitation. Id. (citing Grooters col. 4, l. 67–col. 5, l.7). The Examiner concludes that it would have been obvious “to modify the system of Horowitz with the teachings of Grooters, the rationale being to enable more accurate recordings by specifically defining program start and end times.” Id. Appeal 2019-003406 Application 15/041,747 5 We have considered Appellant’s arguments, but do not find them persuasive of error. Instead, we agree with the Examiner’s findings and conclusions, as set forth in the Final Action from which this appeal was taken and also in the Examiner’s Answer. We address Appellant’s arguments for emphasis in the Analysis section, below. Contentions and Analysis Appellant argues, “Horowitz does not teach or suggest providing an [electronic program guide (EPG)] update message in the program signal stream in Paragraphs 34–37, as asserted by the Examiner.” Appeal Br. 11. This argument is unpersuasive because, as Appellant acknowledges in the next paragraph, the Examiner relies on Grooters—not Horowitz—for teaching this feature. See id. (where Appellant argues, “[t]he Examiner asserts that it would have been obvious to modify Horowitz in view of Grooters to replace the EPG update data by markers including times until the start and end of a program.”). Appellant next argues, “[i]t would not have been obvious to include the recited message in Horowitz.” Appeal Br. 11 (capitalization modified). Appellant more specifically argues, Grooters provides markers in a program stream indicating a time to the start and a time to the end of a program instead of using start and end times defined by an EPG. Grooters only uses the EPG to identify a program to be recorded. The start and end times of the EPG are ignored, even when they are accurate. No comparison between the start and end times defined by the markers and the start and end times defined by the EPG is performed, as claimed. Grooters does not, therefore, teach or suggest receiving in a program stream “at least one message defining a second program start time for the selected program Appeal 2019-003406 Application 15/041,747 6 . . .” for comparison with a start time for recording defined through an EPG, as recited in independent claims 1 and 10. Appeal Br. 12. This argument is unpersuasive. The Examiner relies on Horowitz, not Grooters, for teaching the step of receiving a second program start time and comparing it to the first of Horowitz. Ans. 4 (citing Final Act. 9–10; also citing Horowitz ¶ 34–37). Appellant argues, Not only does Grooters not teach to use markers in Horowitz, Grooters teaches away from the use of an EPG or other such program listing to define start and end recording programs and to update start and end times, as in Horowitz. It would not, therefore, have been obvious to take the teachings of Grooters and use them in Horowitz, which uses an EPG to set recording start and end times. Appeal Br. 12. This argument is unpersuasive because Appellant does not support this teaching-away argument with sufficient facts or reasoning. It is well settled that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Furthermore, a reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. In re Gurley, 27 F.3d 551, 53 (Fed. Cir. 1994). “The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one Appeal 2019-003406 Application 15/041,747 7 another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000). In the present case, Horowitz does not teach away from using some other means of determining that the start or end time of a program has changed. In fact, Horowitz expressly discloses that means other than an EPG update service can be used: “The method, according to an implementation, can be used to update original start, stop and duration times that were obtained by the client device from original EPG data, or from another source[,] such as a viewer’s own knowledge.” (Horowitz ¶ 33) (emphasis added). Appellant argues that modifying Horowitz in light of Grooters would change the principle of operation of Horowitz. Appeal Br. 12–14. More specifically, Appellant argues, The principle of operation of Horowitz is to update EPG data for a program to be recorded, by data that is categorically similar to the original EPG data. . . . For example, a first start time defined in an EPG at a first time, such as a program starting at 8:00PM, is updated to a second, different start time, such as 8:02PM, based on the updated EPG data, if necessary. The system and method of Horowitz are based on the updated EPG data being in a similar format as the original EPG data. Id. at 14. This argument is unpersuasive because, as noted above, Horowitz, itself, states that Horowitz’s method can be used to update original start, stop, and duration times that were obtained by a viewer’s own knowledge or from other sources. Horowitz ¶ 33. Moreover, Appellant does not provide persuasive evidence or reasoning either for why measuring the relevant time in seconds as opposed to clock time is categorically dissimilar or why such a difference constitutes a changed principle of operation. See Appeal Br. 12– Appeal 2019-003406 Application 15/041,747 8 18. For example, Appellant does not persuasively explain why an allegedly different format for marking time constitutes a changed principle of operation that is so substantial as to prevent one of ordinary skill from being motivated to combine the references. Conclusion For the foregoing reasons, Appellant does not persuade us of error in the Examiner’s obviousness rejection of independent claim 1. Accordingly, we sustain the Examiner’s obviousness rejections of that claim and of claims 2–18, 28, 29, and 31–41, which Appellant does not argue separately. Appeal Br. 11–18. We, likewise, sustain the obviousness rejections of claims 19–27. Independent claim 19 is similar in scope to independent claim 1, differing in addressing when to end a recording, as opposed to when to start a recording. Appeal Br. 19, 25. Furthermore, Appellant’s separate arguments to claims 19–27, as a group, are similar to the arguments Appellant presents in relation to independent claim 1. Id. 10. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § / Basis Basis / References Affirmed Reversed 1–29, 31–41 Nonstatutory double patenting Carlucci ’383 1–29, 31–41 1–29, 31–41 Nonstatutory double patenting Carlucci ’383 1–29, 31–41 1–5, 9–13, 17– 23, 27–29, 31, 103 Horowitz, Grooters 1–5, 9–13, 17–23, 27– Appeal 2019-003406 Application 15/041,747 9 TIME PERIOD FOR RESPONSE 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 32, 36–41 29, 31, 32, 36–41 6, 7, 14–16, 24, 25, 33–35 103 Horowitz, Grooters, Yuen 6, 7, 14–16, 24, 25, 33–35 8, 26 103 Horowitz, Grooters, Yuen, Young 8, 26 Overall Outcome 1–29, 31–41