Ex Parte Bennett et al

Patent Trial and Appeal Board

Feb 12, 2016

12696570 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/696,570 01129/2010 James D. Bennett
51472 7590 02/17/2016
GARLICK & MARKISON
P.O. BOX 160727
AUSTIN, TX 78716-0727
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.
BP20030 1191
EXAMINER
SALTARELLI, DOMINIC D
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
02/17/2016 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):
MMURDOCK@TEXASPATENTS.COM
ghmptocor@texaspatents.com
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES D. BENNETT and JEYHAN KARAOGUZ
Appeal2014-00227
Application 12/696,570
Technology Center 2400
Before JOSEPH L. DIXON, ROBERT E. NAPPI, and
JOHN R. KENNY, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1through27, which constitute all of
the claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Appeal2014-00227
Application 12/696,570
STATEMENT OF THE CASE
INVENTION
The invention is directed to a method of replacing first sourced media
with second sourced media based on first sourced media quality. Abstract.
Claim 1 is representative and reproduced below:
1. An apparatus, comprising:
a broadcast reception circuitry to receive broadcast media
provided from at least one of a plurality of broadcast media
sources;
a media playback circuitry, coupled to the broadcast
reception circuitry, to output first media provided from one of
the plurality of broadcast media sources;
a media storage circuitry that is coupled to the media
playback circuitry and implemented to store media from at least
one additional source other than the broadcast reception
circuitry; and
a media management circuitry, coupled to the broadcast
reception circuitry; the media playback circuitry; and the media
storage circuitry, to:
analyze the first media provided from one of the plurality
of broadcast media sources to identify degradation in quality of
the first media; and
based on the identified degradation in the quality of the
first media, direct the media playback circuitry to stop
outputting the first media and to output second media provided
from the media storage circuitry.
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Application 12/696,570
REJECTIONS AT ISSUE
The Examiner has rejected claim 1 under 35 U.S.C. § 112 first
paragraph as failing to comply with the written description requirement.
Final Office Action 2-3. 1
The Examiner has rejected claims 1through27 under 35 U.S.C. § 103
as being unpatentable over White et al. (US 2009/0193482 Al; July 30,
2009) ("White"), Kawamata et al. (US 2003/0129941 Al; July 10, 2003)
("Kawamata") and Ozaki et al. (US 2006/0033864 Al; Feb. 16, 2006).
Final Office Action 3-10.
ISSUES AND ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions that the Examiner has erred. Further, we have reviewed the
Examiner's response to Appellants' arguments. We disagree with
Appellants' conclusion that the Examiner erred in rejecting claim 1under35
U.S.C. § 112 and claims 1through27 under 35 U.S.C. § 103.
Rejection under 35 U.S.C. § 112
The Examiner has rejected claim 1 stating that "[t]here is no
disclosure in the originally filed specification regarding the media storage
circuitry receiving content from any source, broadcast circuitry or otherwise.
The originally filed disclosure refers to the media storage circuitry as a being
an alternative source to the broadcast circuitry without further elaboration."
1 Throughout the opinion we refer to the Appellants' Appeal Brief, dated
June 29, 2013 and Reply Brief, dated September 30, 2013; Final Office
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Application 12/696,570
Final Office Action 3. We have reviewed the Appellants' arguments
directed to this rejection on pages 17 through 19 of the Brief, and
Appellants' originally filed specification. Appellants' arguments which cite
to the Specification and Figure 8, which depicts a buffering embodiment, is
insufficient to demonstrate possession. The cited portions of the
Specification are not directed to the media storage circuitry, as the buffer
discussed is part of the media management circuitry not the media storage
circuitry. App Br. 18. Further, we note that Figure 4 of Appellants'
Specification depicts the media storage circuit (item 440) and shows that it is
connected to the broadcast reception circuit (item 430) and the media
management circuit (item 42). As the Specification does not disclose the
media management circuit sourcing media content, the broadcast media
circuit is the only element of the system which sources media that could be
provided to the media storage circuit. Thus, we disagree with the
Appellants' conclusion that the originally filed Specification demonstrates
Appellants possessed the claim 1 feature of "a media storage circuitry ...
implemented to store media from at least one additional source other than
the broadcast reception circuitry," and we sustain the Examiner's rejection
of claim 1 under 35 U.S.C. § 112 first paragraph.
Rejection under 35 U.S.C. § 103
Claims 1, 9, and 22.
Appellants provide several arguments directed to the rejection of
independent claims 1, 9, and 22, based upon combination of White,
Action dated January 9, 2013; and, the Examiner's Answer, mailed August
1, 2013.
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Application 12/696,570
Kawamata, and Ozaki on pages 23 through 32 of the Appeal Brief~ and
pages 4 through 6 of the Reply Brief. Specifically, Appellants argue that:
White and Kawamata rely upon the same broadcast source, and not
dissimilar sources as claimed (App. Br. 23-24); Kawamata buffers content
from a broadcast, not a second source (App. Br. 25-27); the splicing of
media in Ozaki is not based upon signal degradation (App. Br. 27-31 ); and
the cited art does not provide some suggestion or motivation to modify the
teachings to arrive at the claimed invention (App. Br. 31-32).
We are not persuaded of error by these arguments. The Examiner has
found that White teaches a system with broadcast reception circuitry to
receive content, and media management circuitry to analyze the broadcast
media for degradation and output data from a second source. Final Office
Action 3--4. The Examiner finds that Kawamata teaches a system where if
broadcast media has degraded, media is output from a media storage device.
Final Office Action 4. Finally, the Examiner finds that Ozaki teaches a
media playback device with two tuners. Final Office Action 5. Throughout
the rejection the Examiner provides a reasoned rationale to combine the
teachings. In response to Appellants' arguments, the Examiner states that it
is the combined teachings that meet the claim. Specifically, Ozaki teaches
more than one source of media, and Kawamata is relied upon to teach
switching media sources based upon degradation. Answer 4. We have
reviewed the references cited, and we concur with the Examiner's findings
of fact, rationale, and response to arguments. We are not persuaded of error
by Appellants' arguments. Accordingly, we sustain the Examiner's rejection
of claims 1, 9, and22.
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Application 12/696,570
Claims 2 and 10.
Appellants argue the rejection of claims 2 and 10 is in error as the
buffered accumulated content of Kawamata is not operative to provide a first
media to the media management circuity while analyzing a second portion to
identify degradation as recited in claim 1. App. Br. 32 and 33; Reply Br. 7.
The Examiner provides comprehensive responses to Appellants' arguments
on pages 4 and 5 of the Answer. Specifically, the Examiner finds that the
skilled artisan would recognize that the purpose of the buffering in
Kawamata, is to provide time to identify the degradation of the signal and
avoid a "sound out" condition (where there is no output from the device).
We have reviewed the teachings of Kawamata, and we concur with the
Examiner's findings. Accordingly, Appellants' arguments have not
persuaded us of error in the Examiner's rejection, and we sustain the
Examiner's rejection of claims 2 and 10.
Claims 3, 12, 19, and 24.
Appellants argue the rejection of claims 3, 12, 19, and 24 is in error as
the combination of the references do not teach a user interface to receive
user input to provide a first portion of the media from one of the broadcast
media sources. App. Br. 33-34. The Examiner, in response to Appellants'
argument, finds that White teaches a user providing instructions to view
media. Answer 6 (citing White para's 10, 17, 22, and Fig 3). We concur
with the Examiner's finding and are not persuaded of error in the
Examiner's rejection. Accordingly, we sustain the Examiner's rejection of
claims 3, 12, 19, and 24.
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Application 12/696,570
Claims 4, 13, 14, and 25.
Appellants argue the rejection of claims 4, 13, 14, and 25 is in error as
the combination of the references do not teach a second broadcast reception
circuit to receive a second broadcast media provided from a second source
as claimed. The Examiner in response identifies two tuners in Ozaki that
meet this claim limitation. Answer 7 (citing Ozaki para 21 ). We concur
with the Examiner's finding and are not persuaded of error in the
Examiner's rejection. Accordingly, we sustain the Examiner's rejection of
claims 4, 13, 14, and 25.
Claims 5 and 15.
Appellants argue the rejection of claims 5 and 15 is in error as the
combination of the references do not teach the identified degradation is a
discontinuity in the first media as claimed. App. Br. 36. Appellants assert
that Kawamata' s disconnection detection portion does not detect a
discontinuity. App. Br. 36. The Examiner finds, and we concur, that
Kawamata's teaching of detecting a disconnection is detecting a
discontinuity. Answer 7. Thus, we are not persuaded of error in the
Examiner's rejection. Accordingly, we sustain the Examiner's rejection of
claims 5 and 15.
Claims 6 and 16.
Appellants argue the rejection of claims 6 and 16 is in error as the
combination of the references do not teach the identified degradation is a
reduction in the signal to noise ratio. App. Br. 37. The Examiner finds, and
we concur, that White teaches using the signal to noise ratio as a metric of
degradation of a signal. Answer 8 (citing White para 19). Thus, we are not
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Application 12/696,570
persuaded of error in the Examiner's rejection. Accordingly, we sustain the
Examiner's rejection of claims 6 and 16.
Claims 7, 17, and 26.
Appellants argue the rejection of claims 7, 17, and 26 is in error as the
combination of the references do not teach the claimed user interface. App.
Br. 37-38. In response to Appellants' arguments, the Examiner finds that
Kawamata includes an interface to enable the user to specify their favorite
program. Answer 8 and 9 (citing Kawamata para. 90 and 94). We concur
with the Examiner and sustain the Examiner's rejection of claims 7, 17, and
26.
Claims 8, 21, and 27.
Appellants argue the rejection of claims 8, 21, and 2 7 is in error as the
combination of the references do not teach the claimed user interface with
two user ratings. App. Br. 39. In response to Appellants' arguments, the
Examiner finds that Kawamata's interface that enables the user to specify a
program as "favorite" teaches the user is entering a rating. Answer 8 and 9
(citing Kawamata para. 73). We concur with the Examiner and note
paragraphs 73 and 90 both identify that ratings can be entered for more than
one person. Thus, Appellants' arguments have not persuaded us of error in
Examiner's rejection, and we sustain the Examiner's rejection of claims 8,
21, and 27.
Claim 18.
Appellants argue the rejection of claim 18 is in error as the
Examiner's reliance on Official Notice is improper to show that the
limitation directed to generating modified media is obvious. App. Br. 40-
41. Further, Appellants assert that the evidence that the Examiner provides
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in the Answer to support the Official Notice should be withdrawn or
prosecution should be reopened. Reply Br. 14. We disagree with both
assertions.
First, Appellants' challenge to the Examiner's Official Notice is
untimely. Appellants needed to traverse that notice before appealing. "If
applicant does not traverse the [E]xaminer's assertion of [O]fficial [N]otice
or applicant's traverse is not adequate, ... the common knowledge or well-
known in the art statement is taken to be admitted prior art .... " MPEP §
2144.03(C). The Examiner took the Official Notice in his September 13,
2012 Office Action. Id. at 7. The Examiner found, and Appellants do not
dispute, that in responding to that office action, Appellants did not traverse
that notice. Final Office Action 2.
Second, Appellants' traversal is inadequate. An adequate traversal
must ""contain adequate information or argument" to create on its face "a
reasonable doubt regarding the circumstances justifying the ... notice" of
what is well known to an ordinarily skilled artisan. In re Boon, 439 F.2d
724, 728 (CCPA 1971). "To adequately traverse such a finding [of Official
Notice], an applicant must specifically point out the supposed errors in the
[E]xaminer' s action, which would include stating why the noticed fact is not
considered to be common knowledge or well-known in the art." MPEP §
2144.03(C); see also 37 CPR§ 1.11 l(b); In re Chevenard, 139 F.2d 711,
713 (CCPA 1943). Here, Appellants do not present any reason why the
noticed facts are not considered to be common knowledge or well-known in
the art. Appeal Br. 40-41.
Third, if Appellants had adequately traverse the Official Notice, the
Examiner could present evidence to support that notice.
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MPEP § 2144.03(C). Here, the Examiner presents Sullivan (US Patent
6,662,365) as supporting the Official Notice. Answer 10. Appellants have
not persuaded us that the Examiner erred in finding that Sullivan provides
that support.
Finally, Appellants waived the argument that the Examiner raises a
new ground of rejection that reopens prosecution by citing Sullivan in the
Answer. The argument concerns a petitionable, not an appealable, matter
that Appellants needed to raise before filing their Reply, which Appellants
did not do. See 37 C.F.R. §41.40(a).
Accordingly, we are not persuaded of error in the Examiner's
rejection, and we sustain the Examiner's rejection of claim 18.
Claim 20.
Appellants argue the rejection of claim 20 is in error as the
Examiner's reliance on Official Notice is improper to show the limitation
directed to comparing the signal to noise ratios of channels of broadcasts.
App. Br. 41--42. Further, similar to Appellants' argument directed to claim
18, Appellants assert that the evidence that the Examiner provided in the
Answer to support the Official Notice should be withdrawn or prosecution
should be reopened. Reply Br. 15. We disagree with these assertions for
the same reasons expressed above with respect to claim 18: Appellants'
traversal of the Official Notice is neither timely nor adequate, Appellants
have not persuaded us that the Examiner erred in finding that the reference
cited in the Answer (Pickert) supports the Official Notice, and Appellants
waived the argument that prosecution should be reopened because the
Examiner cited Pickert in the Answer. See, e.g., September 13 Office
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Action, p. 8; Final Act. 2. Accordingly, we are not persuaded of error in the
Examiner's rejection, and we sustain the Examiner's rejection of claim 20.
DECISION
We affirm the Examiner's rejection of claims 1through27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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