Ex Parte Berberet et alDownload PDFPatent Trial and Appeal BoardFeb 25, 201310182307 (P.T.A.B. Feb. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SUZANNE M. BERBERET and WILLIAM GLAD ____________ Appeal 2010-011036 Application 10/182,3071 Technology Center 2400 ____________ Before JOSEPH F. RUGGIERO, MARC S. HOFF, and ELENI MANTIS MERCADER, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 6-15, 17-26, 30-37, and 39-44.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 The real party in interest is Time Warner Cable, Inc. 2 Claims 2-5, 16, 27-29, 38, and 45-123 have been cancelled. Appeal 2010-011036 Application 10/182,307 2 STATEMENT OF THE CASE Appellants’ invention is a method and system for storing programs from multiple video sources in a local video buffer as they are received at the subscriber’s home, so the subscriber can access the programs in their entirety at any time (Spec. 7). One aspect of the invention is a method for subscribers to restart programs they have joined in progress and to view and record them in their entirety (Spec. 8). Independent claim 1, reproduced below, is representative of the subject matter on appeal. 1. A system for providing broadcast programming to subscriber locations, the system comprising: an intermediate video supplier which includes a video buffer and a video server that (a) receives from at least one video source external to the intermediate video supplier broadcast programming comprising a plurality of video programs each scheduled to be broadcast starting at a specified time until completed, (b) buffers the received broadcast programming in the video buffer as it is received from the at least one video source, and as it is broadcast to subscribers, whether or not the intermediate video supplier received a request from any subscriber to so buffer the broadcast programming, (c) retains the video programs in the video buffer after the broadcast of the video programs has been completed, and (d) processes received subscriber requests and retrieves, according to the received subscriber requests, either of currently broadcast programming or broadcast programming previously buffered in the video buffer by the video server; the subscriber locations having subscriber location equipment which includes a local control unit that transmits the subscriber requests to the video server via at least one data link and receives, from the video server, either of the currently broadcast programming or the previously buffered broadcast programming for display on a local video display via the at least one data link; wherein the local control unit is configured to issue a subscriber request to the video server to instruct the video server to retrieve programming previously buffered in the video buffer that corresponds to a portion of broadcast programming other than the portion of programming Appeal 2010-011036 Application 10/182,307 3 being currently broadcast, whether or not the video program in the requested portion of broadcast programming has yet been broadcast to completion, and to transfer the retrieved buffered programming to the local control unit for viewing the local video display; and wherein the video server, the video buffer and the local control unit are configured to process a restart subscriber request so as to facilitate viewing a currently viewed program from the beginning when a subscriber first views the currently viewed broadcast program on a local video display at a point in time when the currently viewed program was already in progress and the restart subscriber request may be initiated by a subscriber with a single action. REFERENCES Gelman US 5,371,532 Dec. 6, 1994 Bryant US 5,652,615 July 29, 1997 Hendricks US 5,659,350 Aug. 19, 1997 Harrison US 5,748,254 May 5, 1998 Girard US 5,751,282 May 12, 1998 Salesky US 6,343,313 B1 Jan. 29, 2002 Ellis US 2005/0229213 A1 Oct. 13, 2005 REJECTIONS Claims 1, 6-10, 17-26, 31-35, and 39-43 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gelman in view of Girard, Salesky, and Harrison. Claims 11-13 and 33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gelman in view of Girard, Salesky, Harrison, and Hendricks. Claim 30 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gelman in view of Girard, Salesky, Harrison, and Bryant. Appeal 2010-011036 Application 10/182,307 4 Claims 14, 15, 36, 37, and 44 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gelman in view of Girard, Salesky, Harrison, and Ellis. ISSUES Appellants argue that the Examiner used impermissible hindsight in combining four references to arrive at the claimed invention (App. Br. 10- 12). Appellants further contend that Gelman, Salesky, and Harrison are not analogous prior art with respect to the claimed invention (App. Br. 13-15). Appellants assert that Salesky’s and Harrison’s “VCR-style controls” teach away from Appellants’ invention (App. Br. 17-18). With respect to claims 12, 13, and 34, Appellants argue that Gelman does not inherently teach a copyright owner database as claimed (App. Br. 20-21). With reference to claims 14, 15, 36, and 37, Appellants assert that Ellis does not teach a video scrapbook of program segments (App. Br. 28-29). Appellants’ arguments present us with the following issues: 1. Did the Examiner exercise impermissible hindsight in rejecting the claims? 2. Are Gelman, Salesky, and Harrison analogous to Appellants’ invention? 3. Do Salesky or Harrison teach away from the claimed invention? 4. Is a copyright owner database inherent to Gelman, or would it have been obvious? 5. Does Ellis teach a video scrapbook of program segments? Appeal 2010-011036 Application 10/182,307 5 PRINCIPLES OF LAW The Examiner’s articulated reasoning in the rejection must possess a rational underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). The test of obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference, nor is it that the claimed invention must be expressly suggested in any one or all of the references. Id. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. The analogous-art test requires that the Board show that a reference is either in the field of the applicant's endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection. References are selected as being reasonably pertinent to the problem based on the judgment of a person having ordinary skill in the art. Kahn, 441 F.3d at 986-87 (citation omitted). To teach away, prior art must “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Mere disclosure of alternative embodiments is not a teaching away. Id. Appeal 2010-011036 Application 10/182,307 6 ANALYSIS CLAIMS 1, 6-10, 17-26, 31, 32, AND 39-43 HINDSIGHT Appellants’ argument that the Examiner exercised impermissible hindsight in combining Gelman, Girard, Salesky, and Harrison (App. Br. 9- 11) is not persuasive to show that the Examiner erred. As Appellants acknowledge, there is no prohibition against the use of a plurality of references being used in combination to assert obviousness (App. Br. 9). We do not agree with Appellants that one of ordinary skill in the art would not have been motivated to combine the references due to their “disparate” nature (App. Br. 10), because we conclude infra that the references constitute analogous art. Last, we do not agree with Appellants that the Examiner has failed to show motivation to combine Gelman, Girard, Salesky, and Harrison (App. Br. 11). We have reviewed the Examiner’s Answer and we find that the Examiner has articulated reasoning having a rational underpinning to support the conclusion that the claimed invention would have been obvious over the asserted combination (Ans. 6-8). See Kahn, 441 F.3d at 988. ANALOGOUS ART We are not persuaded by Appellants’ arguments that Gelman, Salesky, and Harrison constitute nonanalogous art.3 3 Appellants’ remarks in the Reply Brief tending to suggest that Girard is not analogous art are not entitled to consideration. Appellants did not make this argument in the principal brief. Absent a showing of good cause for the argument’s belated presentation, the Board is not required to address argument in the Reply that could have been presented in the principal brief. Appeal 2010-011036 Application 10/182,307 7 Appellants correctly state that a prior art reference is analogous to the invention under appeal if the reference is either in the field of Appellants’ endeavor or is reasonably pertinent to the problem with which the inventors were concerned. See Kahn, 441 F.3d at 986-87. Appellants urge a characterization of their field of endeavor as “the presentation or delivery of broadcast programming to subscriber locations” (Reply Br. 10 (citing Spec. 1) (emphasis omitted)). In contrast, the Examiner finds that Appellants’ field of endeavor concerns “enabling customer interaction with the received video content,” or “enabling a customer to interactively access different portions of the video stream” (Ans. 24). We find that Appellants state the problem with which the inventors were concerned on page 3 of the Specification, in several ways: allowing “television viewers to come into the middle of any program and to still view or record it from the beginning”; allowing viewers “to decide whether or not to record any program or part of a program after they have viewed it”; “view[ing] and/or record[ing] previously broadcast programming”; and going “back in time to view and/or record programming they otherwise might have missed” (Spec. 3). In light of Appellants’ statement of the problem to be solved, we do not agree with Appellants that their field of endeavor should be viewed so narrowly as “delivery of broadcast programming.” We agree with the Examiner that Gelman, directed to a video on demand system that enables a customer to select from a range of video content (Ans. 18), is analogous to Appellants’ invention because it is reasonably pertinent to the problem of viewing programming, whether See Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”). Appeal 2010-011036 Application 10/182,307 8 currently or previously broadcast, that is addressed by Appellants. For similar reasons, we agree that Girard’s interactive television system that permits a viewer to use an electronic programming guide to select current programs, video on demand of past programs, and previews of future programs (col. 1, ll. 6-9), is reasonably pertinent to the problem faced by Appellants. We further agree that Salesky is reasonably pertinent to the problem addressed by Appellants. Even though Salesky is primarily directed to computer conferencing systems, Salesky teaches the function of allowing an attendee who joins a conference to see the presentation from the beginning, and specifically mentions that the function is adapted from the technology of pay-per-view movies (col. 24, ll. 50-56). Salesky is thus concerned with allowing attendees to view a video presentation from start to finish, even if the attendee did not begin viewing the video presentation when it was first available. We further agree with the Examiner that Harrison constitutes analogous art. Harrison teaches a DVD viewing system in which a user may press a button to restart the playing of a video from its beginning (col. 12, ll. 22-24). Again, we agree that an invention involving the replaying a video from the beginning is reasonably pertinent to the stated advantages of Appellants’ invention. TEACHING AWAY Appellants’ argument that Salesky’s “VCR-style controls” teach away from the claimed invention is not persuasive to establish Examiner error (App. Br. 18). We do not agree with Appellants that a teaching of “VCR- style controls” would require that a user “upon entering an in-progress program, press a ‘rewind’ button and sit there watching the program rewind Appeal 2010-011036 Application 10/182,307 9 until the viewer determines that the rewind has reached the beginning of the program” (id.). Appellants’ characterization of the meaning of “VCR-style controls” is far too literal-minded. We agree with the Examiner that “VCR- style” or “VCR-like” refers to “features that allow a viewer of video content to . . . access different portions of the video content, as controlled by the viewer. These are generally descriptive terms, of function that emulate VCR function, rather than being limited only to functions known on a particular standard VCR” (Ans. 27). For similar reasons, we are not persuaded that Salesky and Harrison are not combinable, as Appellants contend (App. Br. 19). We find no conflict between the “VCR-style controls” of Salesky and the controls used to interact with a CD or DVD player such as Harrison teaches. The two systems include a highly similar set of controls, such as play, stop, pause, rewind, and fast-forward. Appellants also briefly assert that Gelman teaches away from the present invention as it requires program storage in central offices (COs), which would limit the storage space available for program buffering (App. Br. 14). We do not agree that the Examiner erred, because the Examiner relied on Girard, rather than Gelman, to teach storing broadcast video programming in a buffer (Ans. 24). Because we are not persuaded by any of Appellants’ arguments that the Examiner erred, we will sustain the Examiner’s § 103 rejection of claims 1, 6-10, 17-26, 31, 32, and 39-43. CLAIMS 34 AND 35 We agree with Appellants that the Examiner has failed to establish that the videos in Gelman would “necessarily contain required licensing Appeal 2010-011036 Application 10/182,307 10 authorizations” (Ans. 11). The Examiner’s assertion that Gelman “would have known to obtain any necessary copyright permissions before operating their businesses” (Ans. 30) is wholly insufficient to establish the inherency of “accessing a copyright owner database,” as claim 34 recites. We conclude that the Examiner erred in rejecting claims 34 and 35, and we will not sustain the Examiner’s § 103 rejection. CLAIMS 11 AND 33 Appellants argue only that Hendricks does not remedy deficiencies of Girard (App. Br. 22-23). Because we conclude supra that the Examiner’s rejection of parent claims 1 and 24 is not erroneous, we conclude that Girard is not deficient with respect to the Examiner’s rejection. Therefore, we will sustain the § 103 rejection of claims 11 and 33, for the reasons expressed with respect to parent claims 1 and 24. CLAIMS 12 AND 13 We agree with Appellants’ arguments that the Examiner erred in rejecting claims 12 and 13. The Examiner’s official notice that “attaching copyright data to a video content was old in the art” (Ans. 13) does not correspond to claim 12’s limitation of “video received from the video source is encoded with copyright owner approval to use the content.” Further (contrary to the Examiner’s assertion), Kobayashi (US 6,490,681 B1; Dec. 3, 2002), cited by the Examiner in support of the official notice taken (Ans. 31), does not contain a teaching of encoding video with copyright owner approval to use the content, but teaches merely registering details of the works with a collective registration body (col. 4, ll. 1-4). With respect to claim 13, the Examiner has failed to explain (as with claim 34) why Gelman would inherently include a copyright owner database. Appeal 2010-011036 Application 10/182,307 11 Because we conclude that the Examiner erred in rejecting claims 12 and 13, we will not sustain the Examiner’s § 103 rejection. CLAIM 30 Claim 30 depends from independent claim 24. Appellants argue only that Bryant does not cure the deficiencies of Girard (App. Br. 27). Because we conclude supra that Girard is not deficient with respect to parent claim 24, we will sustain the Examiner’s § 103 rejection of claim 30, for the same reasons. CLAIMS 14 AND 36 We are not persuaded by Appellants that Ellis fails to teach the limitations of claims 14 and 36. Appellants contend that “nothing in Ellis teaches or suggests a broadcast program segment” (App. Br. 29), but claims 14 and 36 do not recite such a segment. We agree with the Examiner’s finding that Ellis teaches storing “data corresponding to subscriber selected previously broadcast programming,” specifically program guide data associated with a program (Ans. 32; Ellis ¶¶ [0144]-[0149]). We conclude that the Examiner did not err in rejecting claims 14 and 36 as being unpatentable over Gelman in view of Girard, Salesky, Harrison, and Ellis. Accordingly, we will sustain the § 103 rejection. CLAIMS 15 AND 37 We agree with Appellants that Ellis does not teach storing either broadcast program segments or an index identifying a program segment, as claims 15 and 37 recite (App. Br. 29). Thus, we conclude that the Examiner erred in rejecting claims 15 and 37 under § 103, and we will not sustain the rejections. Appeal 2010-011036 Application 10/182,307 12 CLAIM 44 Appellants argue only that Ellis does not cure the deficiencies of Girard with respect to claim 24, from which claim 44 depends. Because we sustain the rejection of claim 24 supra, we will thus also sustain the § 103 rejection of claim 44, for the same reasons. CONCLUSIONS 1. The Examiner did not exercise impermissible hindsight in rejecting the claims. 2. Gelman, Salesky, and Harrison are analogous to Appellants’ invention. 3. Salesky and Harrison do not teach away from the claimed invention. 4. A copyright owner database is not inherent to Gelman and would not have been obvious. 5. Ellis does not teach a video scrapbook of program segments. DECISION The Examiner’s decision rejecting claims 1, 6-11, 14, 17-26, 30-33, 36, and 39-44 is affirmed. The Examiner’s decision rejecting claims 12, 13, 15, 34, 35, and 37 is reversed. AFFIRMED-IN-PART babc Copy with citationCopy as parenthetical citation