DISH Network L.L.C.

Patent Trials and Appeals Board

Dec 2, 2020

2019004552 (P.T.A.B. Dec. 2, 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.
14/875,558 10/05/2015 Robert Lee Sadler P00002.US.02 9301
143292 7590 12/02/2020
Wash Park IP Ltd. -- DISH
387 Corona Street, Suite 540
Denver, CO 80218
EXAMINER
BANTAMOI, ANTHONY
ART UNIT PAPER NUMBER
2423
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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):
jkennedy@washparkip.com
jtkennedy.jk@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT LEE SADLER, NEREUS OSRIC EDWIN LOBO,
YASH SURESH SHAH, and YOHANN ANDRE FRANCOIS GEORGES

Appeal 2019-004552
Application 14/875,558
Technology Center 2400
Before JAMES R. HUGHES, SCOTT B. HOWARD, and
SCOTT E. BAIN, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–6, 8–11, and 13–20 are pending, stand rejected, are appealed
by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1
See Final Act. 1–2; Appeal Br. 2.2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as DISH
Network L.L.C. See Appeal Br. 2.
2 We refer to Appellant’s Specification (“Spec.”), filed Oct. 5, 2015
(claiming benefit of US 62/059,734, filed Oct. 3, 2014); Appeal Brief
(“Appeal Br.”), filed Dec. 9, 2018; and Reply Brief (“Reply Br.”), filed May
Appeal 2019-004552
Application 14/875,558
2
CLAIMED SUBJECT MATTER
The claimed subject matter, according to Appellant, generally “relates
to systems and methods for providing bookmarking data in set-top boxes or
other types of client devices.” Spec. ¶ 2. More specifically, Appellant’s
claims recite methods for providing media content by receiving
bookmarking data at a client device (e.g., a set-top box) from a server (e.g., a
data processing and aggregating server). The bookmarking data identifies a
specific point in a media content item (that originates from a third party) that
may be played from the client device, and the server independently initiates
generation of and generates the bookmarking data using user profile
information, without input from the client device. See Spec. ¶¶ 5–24, Abstr.
Claims 1 (directed to a method) and 18 (also directed to a method) are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of providing media content, comprising:
receiving bookmarking data at a client device from a data
processing and aggregating server,
the bookmarking data identifying a specific point in a
media content item originating from a third party
that is playable from the client device;
wherein the data processing and aggregating server,
independently of the client device, initiates
generation of and generates the bookmarking data
using user profile information;
providing a first output signal based on the bookmarking
data from the client device to a display device,
the first output signal causing the display device to display
at least one bookmark that includes at least one user-

21, 2019. We also refer to the Examiner’s Final Office Action (“Final
Act.”), mailed July 12, 2018; and Answer (“Ans.”) mailed Mar. 22, 2019.
Appeal 2019-004552
Application 14/875,558
3
selectable portion and at least one descriptive
portion;
receiving an input signal at the client device from a user
input device,
the input signal indicating a user selection of a bookmark
displayed by the display device; and
providing a second output signal from the client device to
the display device responsive to the input signal,
the second output signal causing the display device to
display a media content item from a specific point
specified by the bookmarking data.
Appeal Br. 29 (Claims App.) (emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Real et al. (“Real”) US 2003/0004923 A1 Jan. 2, 2003
Ben-Yehezkel US 2003/0004933 A1 Jan. 2, 2003
Epperson et al.
(“Epperson”)
US 2005/0097135 A1 May 5, 2005
Vasilevsky et al.
(“Vasilevsky”)
US 2005/0166258 A1 July 28, 2005
Gibbon et al. (“Gibbon”) US 2007/0098350 A1 May 3, 2007
Curtis et al. (“Curtis”) US 2010/0088726 A1 Apr. 8, 2010
Zhang et al. (“Zhang”) US 2011/0047571 A1 Feb. 24, 2011
Lin et al. (“Lin”) US 2012/0070129 A1 Mar. 22, 2012
Rajan US 2015/0181300 A1 June 25, 2015 (filed
Dec. 19, 2013)

Appeal 2019-004552
Application 14/875,558
4
REJECTIONS3, 4
1. The Examiner rejects claims 1, 2, 4, and 11 under 35 U.S.C.
§ 103 as being unpatentable over Zhang and Rajan. See Final Act. 3–6.
2. The Examiner rejects claims 3, 5, and 6 under 35 U.S.C. § 103
as being unpatentable over Zhang, Rajan, and Lin. See Final Act. 6–10.
3. The Examiner rejects claims 8 and 9 under 35 U.S.C. § 103 as
being unpatentable over Zhang, Rajan, and Curtis. See Final Act. 10–11.
4. The Examiner rejects claim 10 under 35 U.S.C. § 103 as being
unpatentable over Zhang, Rajan, Curtis, and Vasilevsky. See Final Act. 12.
5. The Examiner rejects claims 13–16 under 35 U.S.C. § 103 as
being unpatentable over Zhang, Rajan, and Gibbon. See Final Act. 12–14.
6. The Examiner rejects claim 17 under 35 U.S.C. § 103 as being
unpatentable over Zhang, Rajan, and Epperson. See Final Act. 14–15.
7. The Examiner rejects claims 18–20 under 35 U.S.C. § 103 as
being unpatentable over Zhang, Ben-Yehezkel, and Rajan. See Final Act.
15–19.
ANALYSIS
Obviousness Rejection of Claims 1, 2, 4, and 11
The Examiner rejects independent claim 1 (as well as dependent
claims 2, 4, and 11) as obvious over Zhang and Rajan. See Final Act. 3–5;

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application
has an effective filing date (Oct. 3, 2014) after the AIA’s effective date
(March 16, 2013), this decision refers to 35 U.S.C. § 103.
4 The Examiner rejected claim 18 under 35 U.S.C. § 112(b) as being
indefinite (see Final Act. 2–3), but withdrew the rejection in view of
amendments made by Appellant in an Amendment (filed Sept. 6, 2018). See
Advisory Act. 2 (dated Sept. 17, 2018).
Appeal 2019-004552
Application 14/875,558
5
Ans. 20–26. Appellant contends that Zhang and Rajan do not teach the
disputed limitation of claim 1. See Appeal Br. 15–18; Reply Br. 2–6.
Specifically, Appellant contends, inter alia, that claim 1 requires a server
that operates independently from a client device to initiate generation of
bookmarking data and generate bookmarking data, but Zhang (cited by the
Examiner for the independent server operation), either alone or in
combination with Rajan, does not teach or suggest a “server
‘independently’ initiating generation of and generating bookmarks.”
(Appeal Br. 15). See Appeal Br. 15–18; Reply Br. 2–6.
We agree with Appellant that the Examiner-cited portions of Zhang
(in combination with Rajan) do not teach or suggest a server (a “data
processing and aggregating server”) that, “independently of the client
device, initiates generation of and generates the bookmarking data using user
profile information.” Appeal Br. 29 (Claims App.) (claim 1). See Appeal
Br. 15–18; Reply Br. 2–6; Zhang ¶¶ 62–65, Fig. 3.
The Examiner relies on Zhang to teach initiation of generation and
subsequent generation of bookmarking data. See Final Act. 3–5; Ans. 20–
26. The Examiner finds that the server operation is independent of the client
device—“because the bookmarks are not generated by a client device, but
are generated at a VOD AS” (Video On Demand Application Server) (Final
Act. 3–4). See Final Act. 3–5 (citing Zhang ¶¶ 62–65, Fig. 3). In the
Answer, the Examiner further explains that the disputed limitation “is broad
in scope” (Ans. 21) and does “not preclude the aggregation server from
receiving a client request for content” (Ans. 23). See Ans. 20–26. The
Examiner also maintains that Zhang teaches independent server operation
because Zhang’s “client device does not directly dictate the matching and
generation of the bookmark list” and, therefore, such “generation is
Appeal 2019-004552
Application 14/875,558
6
independent of the client device” (Ans. 21). See Ans. 20–26 (citing Zhang
¶¶ 62–65, Fig. 3).
We disagree with the Examiner’s unreasonable interpretation of the
disputed claim limitation as well as the Examiner’s interpretation of Zhang.
Appellant’s claim recites that the data processing and aggregating server
operates “independently of the client device” to initiate generation of
bookmarking data and generate the bookmarking data. Appeal Br. 29
(Claims App.) (claim 1). Appellant’s Specification explains that “the data
processing and aggregating server 108 generates its own request to create
bookmarking data and initiates processing of that request” and does so
“without a direct request from the client device.” Spec. ¶ 97. Further,
Appellant’s Specification expressly distinguishes independent server
operation (to generate bookmarking data) from client device initiated
bookmark generation. See Spec. ¶¶ 95–97. Thus, the disputed limitation
requires the server to initiate bookmarking data generation and subsequent
generation of the bookmarking data without a request from (i.e.,
independently of) the client device.
In contrast, Zhang discloses the VOD AS receives a request and
processes a client device request—“[a]fter receiving a VoD play request of
the user, the VoD AS triggers the bookmark association service, which
includes acquiring the user identity and an identity of a VoD program
content requested by the user,” “and triggering the bookmark association
when the VoD AS processes the VoD play request of the user” (Zhang ¶ 62).
Indeed, Zhang requires information from the request to perform the
bookmark association—“[t]he user identity and the identity of the VoD
program content requested by the user are acquired from the bookmark
association trigger message” (Zhang ¶ 62).
Appeal 2019-004552
Application 14/875,558
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The Examiner does not persuasively explain how the bookmark
association of Zhang teaches or suggests initiation and generation of
bookmarking data independently of a client device (a user request from user
equipment) as required by claim 1.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that the combination Zhang and Rajan renders
obvious Appellant’s claim 1. Claims 2, 4, and 11 depend from and stand
with claim 1. Therefore, we reverse the Examiner’s obviousness rejection of
claims 1, 2, 4, and 11.
Obviousness Rejection of Claims 3, 5, 6, 8–10, and 13–17
The Examiner rejects dependent claims 3, 5, and 6 under 35 U.S.C.
§ 103 as being obvious over Zhang, Rajan, and Lin. See Final Act. 6–10.
The Examiner rejects claims 8 and 9 under 35 U.S.C. § 103 as being obvious
over Zhang, Rajan, and Curtis. See Final Act. 10–11. The Examiner rejects
claim 10 under 35 U.S.C. § 103 as being obvious over Zhang, Rajan, Curtis,
and Vasilevsky. See Final Act. 12. The Examiner rejects claims 13–16
under 35 U.S.C. § 103 as being obvious over Zhang, Rajan, and Gibbon.
See Final Act. 12–14. The Examiner also rejects claim 17 under 35 U.S.C.
§ 103 as being obvious over Zhang, Rajan, and Epperson. See Final Act.
14–15.
The Examiner does not suggest, and we do not find, that the additional
cited references (Lin, Curtis, Vasilevsky, Gibbon, and/or Epperson) cure the
deficiencies of the Zhang and Rajan combination (supra). Therefore, we
reverse the Examiner’s obviousness rejections of dependent claims 3, 5, 6,
8–10, and 13–17 for the same reasons set forth for claim 1 (supra).
Appeal 2019-004552
Application 14/875,558
8
Obviousness Rejection of Claims 18–20
The Examiner rejects independent claim 18 (and dependent claims 19
and 20 under 35 U.S.C. § 103 as being obvious over Zhang, Ben-Yehezkel,
and Rajan. See Final Act. 15–19. Claim 18 recites independent server
operation similar to claim 1 (supra)—“wherein the server performs each of
the above operations independent of the client device” (Appeal Br. 33
(Claims App.) (claim 18)). As with claim 1 (supra), the Examiner relies on
Zhang to teach independent server operation. See Appeal Br. 15–19; Ans.
31–32. For the same reasons as claim 1 (supra), we find the Examiner erred
in determining that Zhang teaches independent server operation to generate
bookmarking data. Accordingly, we reverse the Examiner’s obviousness
rejection of claims 18–20.
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1–6,
8–11, and 13–20 under 35 U.S.C. § 103. We, therefore, do not sustain the
Examiner’s rejection of claims 1–6, 8–11, and 13–20.
Appeal 2019-004552
Application 14/875,558
9
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 11 103 Zhang, Rajan 1, 2, 4, 11
3, 5, 6 103 Zhang, Rajan, Lin 3, 5, 6
8, 9 103 Zhang, Rajan,
Curtis
8, 9
10 103 Zhang, Rajan,
Curtis, Vasilevsky
10
13–16 103 Zhang, Rajan,
Gibbon
13–16
17 103 Zhang, Rajan,
Epperson
17
18–20 103 Zhang, Ben-
Yehezkel, Rajan
18–20
Overall
Outcome
1–6, 8–11, 13–
20

REVERSED