Ex Parte Chaudhry

Patent Trial and Appeal Board

Apr 12, 2016

11960585 (P.T.A.B. Apr. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111960,585 12/19/2007
20991 7590 04/12/2016
THE DIRECTV GROUP, INC
PA TENT DOCKET ADMINISTRATION
CA I LAI I Al09
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
FIRST NAMED INVENTOR
Kapil Chaudhry
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.
PD-207125 4774
EXAMINER
ALAM, MUSHFIKH I
ART UNIT PAPER NUMBER
2426
MAILDATE DELIVERY MODE
04/12/2016 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 KAPIL CHAUDHRY
Appeal2014-005432
Application 11/960,585
Technology Center 2400
Before JEAN R. HOMERE, JASON V. MORGAN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-39, all the claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We reverse and institute a new ground of rejection within the
provisions of 37 C.F.R. § 41.50(b).
1 According to Appellant, the real party in interest is The DIRECTV Group,
Inc. App. Br. 2.
Appeal2014-005432
Application 11/960,585
STATEMENT OF THE CASE
Appellant's Invention
Appellant's invention generally relates to communication systems
having a primary service provider, a user network device and a user device,
and more particularly, to a method and system for requesting the user
recording device to record content from the user network device. Spec. ,-r 1.
Claim 1, which is illustrative, reads as follows:
1. A method comprising:
communicating program guide data to a partner service
provider from a primary service provider, said program guide
data including a content identifier;
communicating the program guide data to a user network
device from the partner service provider, said user network
device associated with a user identifier;
selecting content at the user network device from the
program guide data;
communicating the content identifier from the user
network device to the partner service provider through the
network;
communicating the content identifier and the user
identifier from the partner service provider to the primary
service provider;
generating a recording instruction at the primary service
provider in response to the content identifier and the user
identifier;
communicating the recording instruction to a user
recording device associated with the user identifier from the
primary service provider; and
recording the content in response to the recording
instruction at the user recording device.
2
Appeal2014-005432
Application 11/960,585
Rejections
Claims 1, 3, 8, 9, 18, 20, 34, and 35 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Ellis et al. (US 2005/0028208 Al;
published Feb. 3, 2005). Final Act. 2--4.
Claims 2 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ellis and Arnold et al. (US 2010/
0175093 Al; published July 8, 2010). Final Act. 5.
Claims 4--7 and 21-33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ellis. Final Act. 5-7.2
Claims 11-13 and 37 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ellis and Hendricks et al. (US
6,201,536 Bl; issued Mar. 13, 2001). Final Act. 7-9.
Claims 10 and 36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ellis and Walls et al. (US 2004/
0028386 Al; published Feb. 12, 2004). Final Act. 9.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ellis, Hendricks, and Chen et al. (US
2007/0169144 Al; published July 19, 2007). Final Act. 10.
Claims 15, 38, and 39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Ellis, Hendricks, Chen, and
Savage et al. (US 2009/0164470 Al; published June 25, 2009). Final
Act. 10-11.
2 Because claim 4 depends from claim 2 (rejected over the combination of
Ellis and Arnold), the rejection of claim 4 should also include Arnold.
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Appeal2014-005432
Application 11/960,585
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ellis, Hendricks, Chen, Savage, and
Popp (US 7,548,620 B2; issued June 16, 2009). Final Act. 11-12.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ellis, Hendricks, Chen, and Levi et al.
(US 2003/0236835 Al; published Dec. 25, 2003). Final Act. 12-13.
ANALYSIS3
Dispositive Issue: Did the Examiner err by finding that Ellis discloses
"communicating the content identifier from the user network device to the
partner service provider through the network" and "communicating the
content identifier and the user identifier from the partner service provider to
the primary service provider" (hereinafter "content identifier limitations"),
as recited in claim 1?
Appellant contends the Examiner erred in finding Ellis discloses the
content identifier limitations because "Ellis is silent as to the alleged partner
service provider (the server 80) communicating the content identifier and an
identifier of the alleged user network device (the user television equipment)
to the primary service provider (the television distribution facility 238)."
App. Br. 8.
3 Our decision refers to Appellant's Appeal Brief filed October 7, 2013
("App. Br."); Appellant's Reply Brief filed April 4, 2014 ("Reply Br.); the
Final Office Action mailed May 3, 2013 ("Final Act."); the Examiner's
Answer mailed February 4, 2014 ("Ans."); and original Specification filed
December 19, 2007 ("Spec.").
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Appeal2014-005432
Application 11/960,585
In response, the Examiner finds that Ellis incorporates Ellis et al. US
2003/0149988 (hereinafter "Ellis '988") by reference. 4 Ans. 5. The
Examiner further finds:
Ellis also goes on to disclose in p. 0127 that users may be
request programming for recording remotely. Also, cited in
[Ellis '988] are the transmission of the content ID and user ID
when making a request for recording (p. 0142). Within the
infrastructure of Ellis [']208, the content ID and user ID of Ellis
['988] would be transmitted through the partner servicer
provider (i.e. local server node, hub, home server) to the
television distribution facility so that the program identifier and
user information are transmitted and recorded at recording
device (see include, but are not limited to, E208: paragraph
0127).
Ans. 5.
We agree with Appellant (Reply Br. 4) that the Examiner's findings
fail to show that transmission of content ID and user ID when making a
request for recording, as disclosed in the '244 application, expressly or
inherently describes communicating the content identifier and the user
identifier from a partner service provider to a primary service provider, as
required by claim 1. Instead, the '244 application describes that when a user
indicates a desire to record a program, the program device (e.g., a user
network device) transmits a record request including an identifier for the
program and an identifier for the user (e.g., the content ID and the user ID)
4 We agree with Appellant's contention (Reply Br. 4) that Ellis does not
incorporate Ellis '988 by reference. However, Ellis '988 is a continuation
of, and has substantially the same disclosure as, US Patent Application No.
09/332,244, filed June 11, 1999 (hereinafter "the '244 application"), which
Ellis does incorporate by reference. Ellis i-f 17. Therefore, we find the
Examiner's citation to Ellis '988 instead of the '244 application to be
harmless error.
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Appeal2014-005432
Application 11/960,585
to a remote media server (e.g., a partner service provider) as opposed to
transmitting such IDs from the partner service provider to the primary
service provider. '244 Application 51; Ellis '988 i-f 142. Accordingly, we do
not sustain the rejection of claim 1, claims 2-39, which recites
commensurate limitations, based on the rationale set forth by the Examiner.
New Ground of Rejection
Ellis discloses an Internet service system that provides users Internet-
based (e.g., remote) access to a program guide. Ellis i-f 97. Ellis further
discloses that users may use a remote program guide access device (e.g., a
network user device) to establish an Internet session with an Internet service
system and thereby obtain program guide data or set program guide settings
(e.g., set reminders or notifications, view listings, schedule program
recording, etc.). Id. Ellis discloses that the Internet service system may be
located at a facility that is separate from television distribution facility 16.
Ellis i-fi-1 97, 101; Fig. 6c. Ellis' Internet service system provides users an on-
line program guide server application or web site that enables users to access
a personal web page and set various program guide settings and access
various program guide functions. Ellis' Internet service system, therefore, is
within the broadest definition of the term "partner service provider," which
is consistent with Appellant's Specification. See Spec. i-f 37.
Ellis further discloses:
After the user has set various program guide settings or
accessed various program guide functions via a web page,
Internet service system 23 5 may provide the settings and [other]
program guide information to Internet service system 61 for
distribution by program guide server 25 or distribution
equipment 21 (as shown) to user television equipment 22. The
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Appeal2014-005432
Application 11/960,585
local guide updates its settings, records programs, plays back
programs, or performs any other suitable function accordingly.
Ellis i-f 101. Ellis discloses that the program guide information includes
listings information, recording information, user information, and any other
information necessary for remotely providing program guide functionality.
Ellis i-f 103. As such, Ellis discloses the limitations recited in claim 1 and
independent claim 18, which recites commensurate limitations.
As our reasoning differs from that set forth by the Examiner, we
designate our reasoning as a NEW GROUND of rejection pursuant to 37
C.F.R. § 41.50(b).
Although we decline to reject every claim pursuant to our
discretionary authority under 37 C.F.R. § 41.50(b), we emphasize that our
decision does not mean the claims dependent from claims 1 and 18 (2-17
and 19-39) are patentable. Rather, we leave the patentability determination
of these dependent claims to the Examiner. See MPEP § 1213.02.
DECISION
We reverse the Examiner's rejection of claims 1-39.
We enter a new ground of rejection for claims 1 and 18 under
35 U.S.C. § 102(b) as being anticipated by Ellis.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that "[a] new ground of rejection ...
shall not be considered final for judicial review."
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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Appeal2014-005432
Application 11/960,585
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record.
37 C.F.R. § 41.50(b).
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).
REVERSED
37 C.F.R. § 41.50(b)
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