Ex Parte Boccon-Gibod et alDownload PDFPatent Trial and Appeal BoardDec 21, 201610746809 (P.T.A.B. Dec. 21, 2016) Copy Citation 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. 10/746,809 12/24/2003 Gilles Boccon-Gibod 4630-008 4699 22440 7590 12/23/2016 GOTTLIEB RACKMAN & REISMAN PC 270 MADISON AVENUE 8THFLOOR NEW YORK, NY 10016-0601 EXAMINER ALAM, MUSHFIKH I ART UNIT PAPER NUMBER 2426 NOTIFICATION DATE DELIVERY MODE 12/23/2016 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): patenteaction @ grr. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GILLES BOCCON-GIBOD and DAVID ALAN BRYAN Appeal 2016-000756 Application 10/746,8091 Technology Center 2400 Before ALLEN R MacDONALD, MICHAEL M. BARRY, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 3, 4, 6-9, 11-13, 17, 20-23, 40, 42, 43, 45, 48, 50-58, 60, 63, 67, and 68, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Technology The application relates to “allowing a group of television viewers to share program viewing information” which can be used to decide which programs to record or view. Abstract. 1 Appellants state the real party in interest is Time Warner, Inc. App. Br. 2. Appeal 2016-000756 Application 10/746,809 Representative Claim Claim 1 is representative and reproduced below with the limitations at issue emphasized:2 1. A method of sharing programs between a community of users communicating with an electronic publishing site, each user having a consumer media device (CMD), said CMDs including a program link detector, the method comprising: receiving a program selection by said electronic publishing site on the Internet, said program selection identifying a particular program to be viewed by the plurality of users; and publishing by said electronic publishing site a communication to said community of users, said communication including an imbedded program link identifying a particular program; wherein when users of said user community receive said communication, the program link detector detects said program link imbedded in said communication, and in response, said CMDs obtain said particular program and record and/or play said particular program for the respective users. Rejections Claims 1, 3, 4, 11, 13, 17, 20, 60, 63, 67, and 68 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Dureau et al. (US 2003/0093806 Al; May 15, 2003) and Wong et al. (US 2011/0013885 Al; Jan. 20, 2011). Final Act. 2. Claims 12, 21, and 48 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Dureau, Wong, and Goldman (US 2002/0112239 Al; Aug. 15, 2002). Final Act. 6. Claims 6, 8, 9, 43, and 52 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Dureau, Wong, and Devara et al. (US 2003/0037340 Al; Feb. 20, 2003). Final Act. 9. 2 Appellants’ Claims Appendix incorrectly lists this as claim 2. App. Br. 14. 2 Appeal 2016-000756 Application 10/746,809 Claims 7 and 56—58 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Dureau, Wong, Devara, and Rodriguez et al. (US 7,200,857 Bl; Apr. 3, 2007). Final Act. 11. Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Dureau, Wong, Goldman, and Wood et al. (US 2005/0047752 Al; Mar. 3, 2005). Final Act. 13-14. Claim 55 stands rejected under 35 U.S.C. § 103(a) as obvious over the combination of Dureau, Wong, and Kellerman et al. (US 7,296,295 B2; Nov. 13,2007). Final Act. 15. Claim 42 stands rejected under 35 U.S.C. § 103(a) as obvious over the combination of Dureau, Wong, and Wood. Final Act. 15. Claims 45 and 50 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Dureau, Wong, and Rodriguez. Final Act. 16. Claim 51 stands rejected under 35 U.S.C. § 103(a) as obvious over the combination of Dureau, Wong, Devara, and Ellis et al. (US 7,185,355 Bl; Feb. 27,2007). Final Act. 16. Claims 53 and 54 stand rejected under 35 U.S.C. § 103(a) as obvious over the combination of Dureau, Wong, Devara, and Shusman (US 2004/0032486 Al; Feb. 19,2004). Final Act. 17. ISSUES 1. Did the Examiner err in finding the combination of Dureau and Wong teaches or suggests an “electronic publishing site,” as recited in claim 1? 2. Did the Examiner err in finding Dureau teaches or suggests “posting communications with a plurality of program links in sequence,” as recited in claim 11? 3 Appeal 2016-000756 Application 10/746,809 3. Did the Examiner err in concluding claim 17 would have been obvious? ANALYSIS Claim 1 Claim 1 recites “a community of users communicating with an electronic publishing site“receiving a program selection by said electronic publishing site"', and “publishing by said electronic publishing site.'1'’ Appellants contend Dureau’s peer-to-peer network does not disclose a “network with a central server.” App. Br. 12. However, Appellants have not sufficiently addressed the Examiner’s finding that Wong—not Dureau— teaches a Webserver and website. Ans. 3; Final Act. 3. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, Appellants have not sufficiently addressed the Examiner’s combination of Dureau and Wong. Accordingly, we sustain the Examiner’s rejection of claim 1, and claims 3, 4, 6-9, 12, 13, 20-23, 40, 42, 43, 45, 48, 50-58, 60, 63, 67, and 68, which Appellants do not argue separately from claim 1. Claim 11 Claim 11 depends from claim 1 and recites “posting communications with a plurality of program links in sequence.” Appellants contend Dureau teaches a “peer-to-peer network” and “[o]f course there can be no posting of such a communication in a peer to peer system.” App. Br. 12. However, Appellants have not sufficiently addressed the Examiner’s finding that Dureau’s Figure 14 maps to this limitation. Ans. 4. “FIG. 14 illustrates one embodiment of an edit list type message.” Dureau 128. “Generally 4 Appeal 2016-000756 Application 10/746,809 speaking, an edit list describes or identifies multiple data items or portions of a program which are to be captured.” Id. 1 68. For example, Figure 14 of Dureau depicts a message from “Buddy” to “friend 1; friend2; group 1” with “Action: Record Selections” for both “eventl” and “event2.” See id. Tffl 70- 72 (describing Fig. 14, though mistakenly calling it Fig. 9). The rules “require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.” In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011); 37 C.F.R. § 41.37(c)(l)(iv). Here, Appellants have not given us sufficient substantive argument addressing the Examiner’s underlying findings for this limitation. Accordingly, we sustain the Examiner’s rejection of claim 11. Claim 17 Appellants contend that claim 17 “very clearly” requires that “each communication includ[e] commands that are suitable for or compatible with the respective CMD [consumer media device].” App. Br. 12—13; Reply Br. 3. However, Appellants have not identified any specific language in claim 17 that actually recites such a limitation. We agree with the Examiner that the limitation argued by Appellants is not commensurate with claim 17 as currently written. For example, the word “command” only appears in the preamble of claim 17, not the claim body. Accordingly, we sustain the Examiner’s rejection of claim 17. Claim 48 Appellants’ attempt to newly argue claim 48 in the Reply Brief also is improper. By regulation, “any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the 5 Appeal 2016-000756 Application 10/746,809 present appeal.” 37 C.F.R. § 41.37(c)(l)(iv). “Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, . . . will not be considered by the Board for purposes of the present appeal, unless good cause is shown.” 37 C.F.R. § 41.41(b)(2). Here, Appellants have not shown good cause for introducing claim 48 in the Reply Brief, so we do not consider that argument. DECISION For the reasons above, we affirm the Examiner’s decision rejecting claims 1, 3, 4, 6-9, 11-13, 17, 20-23, 40, 42, 43, 45, 48, 50-58, 60, 63, 67, and 68. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED 6 Copy with citationCopy as parenthetical citation