Ex Parte Adimatyam et alDownload PDFPatent Trial and Appeal BoardSep 28, 201612233656 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/233,656 09/19/2008 25537 7590 09/30/2016 VERIZON PA TENT MANAGEMENT GROUP 1320 North Court House Road 9th Floor ARLINGTON, VA 22201-2909 FIRST NAMED INVENTOR Venkata S. Adimatyam 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. 20080139 2491 EXAMINER LIAO, JASON G ART UNIT PAPER NUMBER 2156 NOTIFICATION DATE DELIVERY MODE 09/30/2016 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): patents@verizon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte VENKATA S. ADIMATYAM, SAMBER GAV ADE, and ENRIQUE RUIZ VELASCO FONSECA Appeal2015-004385 Application 12/233,656 1 Technology Center 2100 Before CAROLYN D. THOMAS, KARA L. SZPONDOWSKI, and SHARON PENICK, Administrative Patent Judges. PENICK, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1-5, 7-14, and 16-26, all the pending claims in the present application. (Appeal Br. 6.) Claims 6 and 15 are cancelled. (Id. at 21, 23.) We have jurisdiction over the appeal under 3 5 U.S.C. § 6(b )(1 ). We AFFIRM. 1 According to Appellants, the real party in interest is Verizon Communications Inc. (Appeal Br. 1.) Appeal2015-004385 Application 12/233,656 Invention Appellants' invention relates to multimedia content, and to the creation of user defined-folders and bookmarks for organizing such content and allowing programming playback of content from a specified point. (Spec., Abstract, ff 1, 68-70.) Representative Claim Claim 1, reproduced below with key lirnitations emphasized, is representative: 1. A method comprising: receiving a first input from a user at a set-top box to stop playback of discrete content playing through the set-top box at a first stop point; creating, in response to the first input, a first bookmark for playback of the discrete content starting at the first stop point; receiving a second input from a user at the set-top box to stop playback of the discrete content playing through the set-top box at a second stop point; and creating, in response to the second input, a second bookmark for playback of the discrete content starting at the second stop point, without overwriting the first bookmark. Re} ections2 Appellants appeal the following rejections: A. Claims 1, 7, 10, 16, 19, 21, 23, 25 are rejected under 35 U.S.C. § 103(a) as unpatentable over Nydam et al. (US 2006/0161838 Al; July 20, 2006) (hereinafter "Nydam"), Patel et al. (US 2009/0193486 Al; July 30, 2009) (hereinafter "Patel"), Sull et 2 Claims 1 and 10 further stand objected to as indefinite because is the Examiner finds them to be subject to two or more plausible claim constructions. (Final Action 2, 18.) 2 Appeal2015-004385 Application 12/233,656 al. (US 2006/0064716 Al; iviar. 23, 2006) (hereinafter "Sulll "), and Sull et al. (US 2002/0069218 Al; June 6, 2002) (hereinafter "Sull2"). (Final Action 18-24.) B. Claims 2-5, 8, 9, 11-14, 17, 18, 20, 22, 24, and 26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Patel and Nydam in combination with other references. (Final Action 25-31.) C. Claims 10-14, 16-18, and 23-26 are rejected under 35 U.S.C. § 102(b) as anticipated by "any commercial computer a year before applicants' filing date." (Final Action 31.) D. Claims 1, 10, and 23 are rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable in view of Sull2. (Final Action 31-32.) ANALYSIS "creating, in response to the first input, a first bookmark for playback of the discrete content starting at the first stop point" Issue: Did the Examiner err in finding that the combination of Nydam, Patel, Sulll, and Sull2 teaches or suggests the creation, in response to a user input to stop playback at a stop point, of a bookmark for playback of discrete content from the stop point? The Examiner finds that Sull2 discloses the concept of annotated bookmarks containing position and content information. (Final Action 18.) The Examiner finds that Nydam discloses that such bookmarks can be created in response to receiving a user input to stop playback of discrete content. (Final Action 19.) Additionally, the Examiner finds that Patel discloses such user input to a set-top box. (Final Action 20.) The Examiner 3 Appeal2015-004385 Application 12/233,656 combines these teachings and finds that the combination teaches or suggests the limitations of "creating, in response to the first input, a first bookmark for playback of the discrete content starting at the first stop point" and "creating, in response to the second input, a second bookmark for playback of the discrete content starting at the second stop point," as in claim 1. (Final Action 18-20.) Sull2 relates to working with multimedia files on a network such as the Internet. (Sull2 Abstract.) Sull2 discloses conventional bookmarks which store positional information (for accessing multimedia content from a bookmarked position) and title information for the content, and multimedia bookmarks which store positional and content information (used to visually display multimedia bookmarks in a bookmark list.) (Id. Figs. 1-2, i-f 172.) Nydam also relates to multimedia files, specifically the review and annotation of such files. (Nydam Abstract, i-f 1.) In Nydam, a user pauses the playback of a media file under review to allow one or more annotations to be made at the selected point. (Id. at i-f 27 .) Appellants argue that Sull2 discloses only the "creation of a bookmark in response to a user selecting the add-bookmark control button 908" but that this does not indicate whether playback is stopped by this selection. (Appeal Br. 7.) Additionally, Appellants argue that, while Nydam discloses that a reviewer may pause playback of a file to add annotations, "Nydam does not disclose that the annotations are created in response to the input that pauses playback." (Id. at 9.) Appellants argue that, in Nydam, a user's annotation is required in order to create a bookmark, and that therefore, as the user entering such an annotation is not caused to create the 4 Appeal2015-004385 Application 12/233,656 bookmark by the pausing of playback, the bookmark is not created in response to the input requesting that playback be paused. (Id. at 9-11.) The Examiner finds that, as the claim is written as a method claim using "comprising" language, "the only fact under contention is whether a bookmark is created 'in response' to a user input, irrespective of however many substeps are necessary to create that 'responsive' relation." (Answer 8.) We agree with the Examiner. "[T]he transition 'comprising' creates a presumption ... that the claim does not exclude additional, unrecited elements." Crystal Semiconductor Corp. v. TriTech Microelectronics Int 'l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). Under the broadest reasonable interpretation, the limitation "in response to the first input" permits, i.e., does not exclude, intervening actions such as annotations by a user, and therefore, is taught or suggested by Nydam. In particular, Appellants' Specification does not explicitly define the meaning of "in response to the first input." However, the Specification does describe creation of a bookmark as a result of (a) generally, monitoring "user input to determine when the user wants to create a bookmark," (b) specifically, an embodiment in which "the user creates a bookmark by pressing the 'STOP' button," and (c) alternatively, additional embodiments in which "any other suitable actuator of [a control device or an equivalent peripheral device] may be additionally, or alternatively, used to access the bookmarking function." (Spec. i-f 70, emphasis added.) Appellants do not persuasively explain why the limitation should be interpreted to exclude an additional actuation, or why the entry of an annotation cannot function as such additional actuation. 5 Appeal2015-004385 Application 12/233,656 Therefore, we agree with the Examiner's interpretation of the claim limitation, and further agree that Nydam, in combination with the other cited references in the rejection, teaches or suggests the disputed limitation. Thus, we are not persuaded the Examiner erred in finding that the prior art combination teaches or suggests the disputed limitation. We sustain the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a), and of claims 7, 10, 16, 19, 21, 23, and 25, which are argued on the same basis (Appeal Br. 11) and claims 2-5, 8, 9, 11-14, 17, 18, 20, 22, 24, and 26 argued on substantially similar basis (Appeal Br. 11-12.) DECISION We affirm the Examiner's§ 103(a) rejections of claims 1, 7, 10, 16, 19, 21, 23, and 25 over Nydam, Patel, Sulll, and Sull2 and claims 2-5, 8, 9, 11-14, 17, 18, 20, 22, 24, and 26 under 35 U.S.C. § 103(a) as unpatentable over Patel and Nydam in combination with other references. Our affirmance is dispositive as to all claims on appeal. It is not necessary, therefore, to address the other, cumulative grounds of rejection entered by the Examiner. See In re Suong-Hyu Hyon, 679 F.3d 1363, 1367 (Fed. Cir. 2012) (noting that affirmance of rejection of all claims under § 103(a) made it unnecessary to reach other grounds of rejection); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (holding that by deciding a single dispositive issue, the ITC was not required to review other matters decided by the presiding officer). 6 Appeal2015-004385 Application 12/233,656 Pursuant to 37 C.F.R. § l.136(a)(l )(iv), no time period for taking any subsequent action in connection with this appeal may be extended. AFFIRMED 7 Copy with citationCopy as parenthetical citation