Ex Parte Ashley

Board of Patent Appeals and Interferences

Oct 13, 2010

09950484 (B.P.A.I. Oct. 13, 2010)

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.
09/950,484 09/10/2001 Alexis Ashley GB 000132 1475
24737 7590 10/14/2010
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
EXAMINER
BATES, KEVIN T
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
10/14/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALEXIS ASHLEY
____________________

Appeal 2009-005569
Application 09/950,484
Technology Center 2400
____________________

Before KENNETH W. HAIRSTON, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-9, 11-19, and 21-28. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005569
Application 09/950,484

2
STATEMENT OF THE CASE
Appellant’s claimed invention is an apparatus and method for
handling tokens identifying selected audio or video content that a user may
wish to access (Spec. 1:5-10).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A data processing apparatus operable to obtain from a
remote resolution utility content access data relating to the
forthcoming delivery of content, the apparatus including:
a data capture stage arranged, on receipt of a content identifier
received other than via said content, to determine from said data
the address of said resolution utility; and
a communications stage coupled with said data capture stage
and configured, on receipt of a resolution utility address from
said capture stage, to establish a communications link with said
resolution utility, supply the captured content identifier thereto,
and await the return of the content access data.

REFERENCES
Howe US 5,818,438 Oct. 6, 1998
Lowell US 6,012,086 Jan. 4, 2000
Schneidewend US 6,529,526 B1 Mar. 4, 2003
The Examiner rejected claims 1, 2, 6, and 17 under 35 U.S.C. § 102(e)
as anticipated by Howe.
The Examiner rejected claims 3, 14-16, and 24-28 under 35 U.S.C.
§ 103(a) based upon the teachings of Howe and Lowell.
The Examiner rejected claims 4, 5, 7-9, 11-13, 18, 19, and 21-23
under 35 U.S.C. § 103(a) based upon the teachings of Howe and
Schneidewend.
Appeal 2009-005569
Application 09/950,484

3
Appellant contends Howe does not teach a communications stage
configured to establish a communication link with a resolution utility on
receipt of a resolution utility address (App. Br. 5).2 Appellant further
contends Howe does not teach transmitting or sending a content identifier to
a resolution utility on determination of the resolution utility (App. Br. 6).

ANALYSIS
Rejection of claims 1, 2, 6, and 17 under 35 U.S.C. § 102(e)
With respect to independent claim 1, Appellant argues the set top box
of Howe is not configured to establish a communication link with a
resolution utility “on receipt” of a resolution utility address. Rather,
Appellant asserts, Howe’s set top box establishes a communication link on
receipt of a command from the user. Appellant further argues Howe teaches
away from establishing a communication link “on receipt” of a resolution
utility address because Howe requires intervening events, including a user
notification event and user request event, between receiving an address and
establishing a communication link. (App. Br. 5)
The Examiner finds Howe discloses a set top box that receives an
address that leads to additional content. The set top box notifies the user it
has received the address through display of an icon or button. The set top
box then establishes a communication link with the address upon request by
the user. (Ans. 12; Howe col. 4, ll. 18-50) The Examiner asserts claim 1
does not preclude intervening steps between receiving an address and
establishing a communication link because claim 1 is not limited to

2 Appellant’s Appeal Brief filed February 1, 2007, is referenced throughout
this opinion.
Appeal 2009-005569
Application 09/950,484

4
establishing a communication link immediately, automatically, or without
user intervention (Ans. 11). We agree.
The claim language “on receipt” does not require establishing a
communication link without any intervening actions. Further, claim 1 does
not require the communications stage to actually establish a communication
link upon receiving the resolution utility address. Claim 1 recites “a
communications stage . . . configured, on receipt of a resolution utility
address from said capture stage, to establish a communications link”
(emphasis added). Because claim 1 only requires the communications stage
to be configured to establish a communication link, it does not preclude
additional actions prior to actual establishment of a communication link, as
taught by Howe. Further, Appellant’s argument that Howe teaches away
(App. Br. 5) from the claimed invention has no merit because “‘teaching
away’ is irrelevant to anticipation.” Leggett & Platt, Inc. v. VUTEk, Inc.,
537 F.3d 1349, 1356 (Fed. Cir. 2008) (citation omitted).
With respect to independent claims 6 and 17, Appellant argues Howe
does not teach transmitting (claim 6) or sending (claim 17) a content
identifier to a resolution utility “on determination” of the resolution utility
for reasons similar to those argued with respect to claim 1 (App. Br. 6). The
Examiner relies on the same findings described above with respect to claim
1 in response to Appellant’s arguments regarding claims 6 and 17 (Ans. 13).
As with the “on receipt” language in claim 1, the claim language “on
determination” does not limit claims 6 and 17 to transmitting or sending the
content identifier without any intervening event, such as a user command.
Thus, Howe anticipates claims 1, 6, and 17, and claim 2, which depends
from claim 1.
Appeal 2009-005569
Application 09/950,484

5
Rejection of claims 3-5, 7-9, 11-16, 18, 19, and 21-28 under 35 U.S.C. § 103
Appellant makes no additional arguments other than those presented
with respect to independent claims 1, 6, and 17, for the rejection of claims 3-
5, 7-9, 11-16, 18, 19, and 21-28 under 35 U.S.C. §103, over Howe, Lowell,
and Schneidewend (Ans. 7-8). Thus, these claims fall with claims 1, 6, and
17.

DECISION
The Examiner’s decision rejecting claims 1-9, 11-19, and 21-28 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)(v).

AFFIRMED

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