Ex Parte Britt et al

Patent Trial and Appeal Board

Nov 3, 2016

13773477 (P.T.A.B. Nov. 3, 2016)

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.
13/773,477 02/21/2013 Glenn Britt TWAR.049C2C1/TWC
06-16C3
1013
27299 7590 11/03/2016
GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127
EXAMINER
LONSBERRY, HUNTER B
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
11/03/2016 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GLENN BRITT and MICHEAL L. LAJOIE
____________________

Appeal 2015-005892
Application 13/773,477
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and
DAVID J. CUTITTA, II, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2015-005892
Application 13/773,477

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
49, 50, 53, 65, 67–80, and 83–86. Claims 1–48, 51, 52, 54–64, 66, 81, and
82 have been cancelled. App. Br. 14–16. We have jurisdiction under 35
U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 49, 72, and 83 under appeal read as follows
(emphasis added):
49. A method of content management within a content delivery
network having a plurality of users, said method comprising:
receiving content at a client device from said network, said
client device associated with said at least one of said plurality of users
of said network, said content comprising third-party generated
content; and
causing at least a portion of said received content to be
uploaded to a storage entity of said network from said client device;
wherein said storage entity is configured to store said content at
a storage location specifically associated with said at least one user.
72. A method of managing content via a content delivery network, so
as to ensure copyright preservation, the method comprising:
recording a first rendering of a content element on a first
recording device at a first location, the first recording device being
associated with a first user; and
recording a second rendering of the content element on a
second recording device at a second location, the second location
being in communication with the first location via the content delivery
network, the second rendering being made accessible only to the first
user so as to protect the copyright of the content.
83. The method of Claim 49, wherein said storage location comprises
equipment leased by said at least one user located within a premises
managed by an operator of said network.
Appeal 2015-005892
Application 13/773,477

3
Rejections on Appeal
1. The Examiner rejected claim 49 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
2. The Examiner rejected claims 65, 69, 70, and 72–80 under
35 U.S.C. § 102(b) as being anticipated by Thomas et al (US 2002/0059621
A1, May 16, 2002) (“Thomas”).1
3. The Examiner rejected claims 49, 50, 53, 83, and 84 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Thomas
and Hunter et al. (US 2002/0056118 A1, May 9, 2002) (“Hunter”). 2
4. The Examiner rejected claims 67, 68, 71, 85, and 86 under
35 U.S.C. § 103(a) as being unpatentable over Thomas.3

1 Arguments are not presented for claims 65, 69, and 70. App. Br. 5. We
affirm pro forma the rejection of these claims. Although the Examiner also
rejected claims 81 and 82 (Final Act. 6 and 9), the Appellants list those
claims as cancelled (App. Br. 16).
Claims 72, 77, and 80 are argued separately. Separate patentability is
not argued for claims 73–76, 78, and 79. Except for our ultimate decision,
the Examiner’s rejection of these claims is not discussed further herein.
2 Although claims 83 and 84 are listed as rejected over Thomas alone (Final
Act. 12), the rejection analysis is based on the combination of Thomas and
Hunter (Final Act. 13–14). Separate patentability is not argued for claims
50, 53, and 84. Except for our ultimate decision, this rejection of these
claims are not discussed further herein.
3 Arguments are not presented for claim 67. App. Br. 11. We affirm pro
forma the rejection of this claim.
Claims 68 and 85 are argued separately. Separate patentability is not
argued for claims 71 and 88. Except for our ultimate decision, the
Examiner’s rejection of these claims is not discussed further herein.
Appeal 2015-005892
Application 13/773,477

4
Appellants’ Contentions
1. Appellants contend the Examiner erred in rejecting the claim 49
under 35 U.S.C. § 112, first paragraph, because:
Applicant notes that throughout the specification as filed,
downloading of third party content is disclosed.
App. Br. 4.
2. Appellants contend the Examiner erred in rejecting the claim 72
under 35 U.S.C. § 102(b) because the Final Action relies on the rejections of
claims 49 and 54 without sufficient further explanation. App. Br. 5.
Additionally, Appellants argue:
At paragraph [0065], Thomas discloses an “LREC” button
338 which “... may be used to have a local VCR record media
content that is currently being displayed by the user equipment”;
and an “RREC” button 339 which enables “... currently
displayed media content [may] to be recorded on a server in a
remote server network.” In other words, the user in Thomas may
select one button to have current content recorded locally, and
may select a different button to have current content recorded at
the network server (see also paragraph [0084]). Thomas,
however, does not in any way expressly or inherently describe
a functionality that would allow these features to be used in
concert as would be required to meet the features of Claim 72.
That is to say, the reference does not, that Applicant can find,
provide an option for recording the content which is currently
being displayed (i) at the local device and (ii) at the network
server. The user is given only an option to select recording at one
or the other device; no option is given to request recording at
both the local device and the network server.
App. Br. 6, emphasis added.
Thomas simply does not provide first and second devices which
record the content; only one device in Thomas records the

Appeal 2015-005892
Application 13/773,477

5
content, then it is shared among many devices using e.g.,
“freezing”.
Reply Br. 5.
3. Appellants contend the Examiner erred in rejecting the claim 77
under 35 U.S.C. § 102(b) because:
[I]n Thomas, users are denied access only when the user has
entered an improper account identity or password, or when they
have not been given access rights. Thomas is silent with respect
to blocking users from accessing content when they have not
affirmatively requested to record the content.
App. Br. 8.
In the example given by the Office, a user must first request
access to content; then upon the user’s inability to provide a
password, the user is denied access to the content. Stated
differently, the user in the Office’s example from Thomas
affirmatively requests content.
Reply Br. 6.
4. Appellants contend the Examiner erred in rejecting the claim 80
under 35 U.S.C. § 102(b) because:
[I]n Thomas, in the instance a user does not submit a prior
affirmative request to have the content stored, the content is
simply not distributed thereto; again there is no disclosure of or
need for blocking access to the content in this instance.
App. Br. 9.
Appellant reminds the Office, however, that even a request for
content which includes an incorrect or invalid password still
corresponds to an affirmative request for content.
Reply Br. 7.
5. Appellants contend the Examiner erred in rejecting claim 49
under 35 U.S.C. § 103(a) because:
[T]he remote record option in Thomas enables a user to record
programming content to network storage directly and without
Appeal 2015-005892
Application 13/773,477

6
first providing the content to the device. This is in direct contrast
to the Claim 49 recitation of receiving content at a client device
from the network, and causing at least a portion of the received
content to be uploaded to a storage entity of the network from the
client device. A person of ordinary skill, upon reading Thomas,
would understand that the reference explicitly indicates that
instead of downloading content to the client from the network,
and then uploading content from the device back to the network
(as in Claim 49), content is simply sent directly to the remote
storage space.
App. Br. 10.
6. Appellants contend the Examiner erred in rejecting claim 68
under 35 U.S.C. § 103(a) because:
[N]owhere does the reference disclose the “unfrozen” content
being simultaneously delivered to the original device (i.e., the
device that was used to freeze the content) as well as to the
second (i.e., different) device.
App. Br. 11, emphasis added.
The Office states that the claim language “based at least in part
on said request” is nonspecific and is not necessarily the same
request noted previously in Claim 68. Appellant reminds the
Office that the use of the term “said” indicates an antecedent
basis to a previously referenced feature. Therefore, “said
request” refers specifically to a previously referenced request.
Reply Br. 11.
7. Appellants contend the Examiner erred in rejecting claim 83
under 35 U.S.C. § 103(a) because:
Applicant respectfully submits that the Office’s taking of
Official Notice with respect to Claim[ 83] is improper and
constitutes clear error, in that the Office’s assertions are
unsupported by documentary evidence and are not used
regarding matters that are capable of instant and unquestionable
demonstration of being well known.
App. Br. 12.
Appeal 2015-005892
Application 13/773,477

7
8. Appellants contend the Examiner erred in rejecting claim 85
under 35 U.S.C. § 103(a) because:
Applicant respectfully submits that the Office’s taking of
Official Notice with respect to Claim [85] is improper and
constitutes clear error, in that the Office’s assertions are
unsupported by documentary evidence and are not used
regarding matters that are capable of instant and unquestionable
demonstration of being well known.
App. Br. 12.
Applicant submits that such updates and subscriptions (as
Noticed by the Office) were not of such notorious character at
the time of the invention and as such, such reliance on Official
Notice demonstrates clear error.
Furthermore, based on Applicant’s understanding of
current YouTube™ functionality [referenced by Examiner]
(which Applicant emphatically stresses is not prior art), a user
subscription to a particular channel is not a trigger for receiving
selective delivery of content and/or updates.
App. Br. 12.
Regarding the Office’s furthered comments to an RSS
Feed, Appellant notes that subscription to a feed is simply not
sufficient to read on the claimed feature of Claim 85 (based at
least in part on said preference, selectively deliver content). That
is to say, the subscription service in an RSS feed is no different
than that of YouTube™ in that a user subscription to a particular
channel is not a trigger for receiving selective delivery of
content and/or updates. Instead, the subscribed channel is merely
added to a menu to indicate to the user that new content is
available (rather than delivering the content itself). Thus, the
factual basis for the Official Notice is flawed, and the Office has
committed clear and reversible error.
Reply Br. 12, emphasis added.
Appeal 2015-005892
Application 13/773,477

8
Issues on Appeal
Did the Examiner erred in rejecting claim 49 under 35 U.S.C. § 112,
first paragraph?
Did the Examiner err in rejecting claims 72, 77, and 80 as being
anticipated under 35 U.S.C. § 102(e) because Dewar fails to describe the
limitation argued by Appellants?
Did the Examiner err in rejecting claims 49, 68, 83, and 85 as being
unpatentable under 35 U.S.C. § 103(a) because the prior art does not render
obvious the limitation argued by Appellants?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
As to Appellants’ above contention 1, we agree with Appellants. An
analysis supporting a rejection under 35 U.S.C. § 112, first paragraph, for
lack of enablement, must be based on an undue experimentation analysis
using the Wands factors.
Whether undue experimentation is needed is not a single,
simple factual determination, but rather is a conclusion reached
by weighing many factual considerations.
In re Wands, 858 F.2d 731, 737 (Fed. Circ. 1988).
The Wands factors include:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
Appeal 2015-005892
Application 13/773,477

9
Id. We have reviewed the Examiner’s rejection, and do not find any analysis
based on the Wands factors. For these reasons, the Examiner has not shown
that claim 49 fails to comply with the enablement requirement of 35 U.S.C.
§ 112, first paragraph.
As to Appellants’ above contention 2, we disagree. Although we
agree with Appellants that the Examiner’s reliance in the Final Action on the
rejections of claims 49 and 54 to reject claim 72 was insufficiently
explained, an expanded explanation is provided in the Answer at pages 5–
12. As to Appellants’ particular contention that Thomas discloses an
“LREC” button and an “RREC” button, but, does not describe these features
to be used in concert as would be required to meet the features of Claim 72,
we disagree. Thomas states at paragraph 121:
Files uploaded to the remote server (e.g., VOD server)
may also be downloaded to user equipment to be presented to a
user. Files may be transferred from one user equipment to a
different user equipment system through a media-on-demand
remote server. Files may include almost any type of data,
program, or content. Examples of files that may be uploaded
include, for example, pictures, movies, songs, video games,
documents, e-mails, and Internet Web pages. Files such as
pictures, movies, songs, video, or other audio-visuals materials
may be of particular interest because on-demand media servers
are particularly suited for the delivery and presentation of audio-
visuals to users.
We conclude that an artisan would recognize the highlighted sentences of
Thomas above are inclusive of a sequence of downloading a file to user
equipment (recording a first rendering on a first recording device) followed
by transferring that file through the media-on-demand remote server
(recording a second rendering on a second recording device) to a different
user equipment (recording a third rendering on a third recording device).
Appeal 2015-005892
Application 13/773,477

10
As to Appellants’ above contention 3, we disagree.4 Appellants assert
that the Examiner has erred and assert that an affirmative request to access
content differs from the prior art using a password to access content. We do
not find where Appellants have provided support for these assertions, e.g.,
by explaining their construction of the claimed “affirmatively requested,”
explaining why they believe the claim to be limited to that construction, and
particularly explaining why that construction excludes password based
content access. Rather, we find Appellants’ assertions to be conclusory.
Such unsupported attorney argument, is entitled to little probative value. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
As to Appellants’ above contention 4, we disagree.5 We reach this
result for the same reasons as contention 3.
As to Appellants’ above contention 5, we disagree. We reach this
result for the same reasons as contention 2.
As to Appellants’ above contention 6, we disagree. Appellants’
argument is not commensurate in scope with the claim. The Examiner
correctly points out that claim 68 does not require that the data is
simultaneously downloaded. Ans. 21. Rather, contrary to Appellants’
argument, claim 68 explicitly recites a causal link between downloads, not a
requirement that downloads be simultaneous. Further, contrary to
Appellants’ argument, the Examiner correctly points out that the language

4 As with claim 72, an expanded explanation for the rejection of claim 77 is
provided in the Answer at pages 12–15.
5 As with claim 72, an expanded explanation for the rejection of claim 80 is
provided in the Answer at pages 15–16.
Appeal 2015-005892
Application 13/773,477

11
“based at least in part” is nonspecific and could include a second request that
is based at least in part on said request. Ans. 21. Such as when said already
downloaded stored at least portion of said content is requested to be
downloaded from the second client to the first client. Unlike the first
download in claim 68, the source of the second download is not limited.
As to Appellants’ above contention 7, we disagree. Contrary to
Appellants’ argument, the Examiner correctly points out that “the Examiner
in a letter dated 8/27/14 provided the applicant with a number of references
to support his official notices.” Ans. 23.6
As to Appellants’ above contention 8, the Examiner provides the
Appellants with a number of RSS related references to support his official
notice. Ans. 24. Appellants’ argument directed to the RSS references

6 Although not necessary for our decision, we note that the “leased by said at
least one user” and “managed by an operator of said network” limitations of
claim 83 recite abstract intangible properties of the “equipment” and
“premises” respectively.
Where the claimed and prior art products are identical or substantially
identical in structure or composition, or are produced by identical or
substantially identical processes, a prima facie case of anticipation or
obviousness has been established. In re Best, 562 F.2d 1252, 1255 (CCPA
1977). “[W]hen the PTO shows a sound basis for believing that the products
of the applicant and the prior art are the same, the applicant has the burden
of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990). However, the prima facie case can be rebutted by evidence showing
that the prior art product does not necessarily possess the characteristics of
the claimed product. Best, 562 F.2d at 1255; see also Titanium Metals Corp.
of Am. v. Banner, 778 F.2d 775 (Fed. Cir. 1985). We do not find where
Appellants have presented evidence that the claimed structures are
distinguishable from the prior art structure. Without more, mere recitation
of these abstract intangible properties does not serve to distinguish over the
prior art.
Appeal 2015-005892
Application 13/773,477

12
asserts that “a user subscription to a particular channel is not a trigger for
receiving selective delivery of content and/or updates.” Reply Br. 12. We
disagree. Appellants further assert that based on the user subscription, “the
subscribed channel is merely added to a menu to indicate to the user that
new content is available (rather than delivering the content itself).” Id.
Appellants overlook that an artisan would recognize that “added to a menu”
makes available subsequent steps to the indication that new content is
available which steps include (1) indication by a user that they prefer to
receive the new content, and (2) based on that preference selectively
delivering the new content.

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claim 49 as failing to comply with the enablement requirement of 35 U.S.C.
§ 112, first paragraph.
(2) The Examiner has not erred in rejecting claims 49, 50, 53, 65, 67–
80, and 83–86 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 49, 50, 53, 65, 67–80, and 83–86 are not patentable.

DECISION
The Examiner’s rejection of claim 49, as failing to comply with the
enablement requirement of 35 U.S.C. § 112, first paragraph, is reversed.
The Examiner’s rejections of claims 49, 50, 53, 65, 67–80, and 83–86
as being unpatentable under 35 U.S.C. § 103(a) are affirmed.

Appeal 2015-005892
Application 13/773,477

13
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)(iv).

AFFIRMED