Ex Parte Collins et al

Patent Trial and Appeal Board

Sep 19, 2016

11270165 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111270, 165 11108/2005
111523 7590 09/21/2016
The Marbury Law Group/Qualcomm
11800 Sunrise Valley Drive, 15th Floor
Reston, VA 20191
FIRST NAMED INVENTOR
Bruce Collins
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.
060137/1376-1115 6826
EXAMINER
KASSIM, KHALED M
ART UNIT PAPER NUMBER
2468
NOTIFICATION DATE DELIVERY MODE
09/2112016 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):
ocpat_uspto@qualcomm.com
ptonoticesqc@marburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE COLLINS, GORDON KENT WALKER, AN MEI
CHEN, and CARLOS MACELO PAZOS
Appeal2015-002337
Application 11/270, 165
Technology Center 2400
Before JAMES R. HUGHES, CATHERINE SHIANG, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 3-14, 16-19, 21-24, 26-30, 32-34, 36-39, 41--47, 49-
52, and 54--66, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal2015-002337
Application 11/270, 165
STATEMENT OF THE CASE
Introduction
The present invention relates to content distribution systems. See
generally Spec. 1. Claim 1 is exemplary:
1. A method comprising:
associating, with a server, at least one package of a set of
packages with a billing and customer service (BCS) provider;
associating, with the server, at least one auxiliary service
and a plurality of channels with the at least one package, each
channel of the plurality of channels comprising a view of at
least one base service offered by the at least one package,
wherein at least one channel is associated with the at
least one auxiliary service such that the view of the at least one
base service is customized by the at least one auxiliary service
to include enhancements or supplementary information to the at
least one base service independent of a channel guide;
providing, with the server, a subscription to a device for
the at least one package associated with the BCS provider;
transmitting, with the server to the device, a packager
message comprising a first record indicating the association
between the at least one auxiliary service and the at least one
channel of the at least one package, wherein the packager
message is transmitted separately from the at least one auxiliary
service; and
transmitting, with the server to the device, a service
definition message comprising a second record indicating a
validity time at which the association between the at least one
auxiliary service and the at least one channel becomes valid
such that the at least one base service is customized by the at
least one auxiliary service at the validity time, wherein the
service definition message is transmitted separately from the at
least one auxiliary service and the at least one channel.
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Application 11/270, 165
References and Rejections
Claims 11, 36-39, 41--44, 65, and 66 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter that the inventors regard as the
invention.
Claims 1, 3-14, 16-19, 21-24, 26-30, 32-34, 36-39, 41--47, 49-52,
and 54---66 are rejected under 35 USC§ 103(a) as being unpatentable over
Vermola (WIPO Pub. No. WO 2005/045603 A3, published May 19, 2005),
LaJoie (US 2005/0015804 Al, published Jan. 20, 2005), and Ellis (US
2004/0117831 Al, published June 17, 2004).
ANALYSIS 1
35 U.S.C. § 112, Second paragraph
Claims must "particularly point[] out and distinctly claim[] the subject
matter which the applicant regards as his invention." 35 U.S.C. § 112,
second paragraph.
As to a means-plus-function claim term, "[i]f the patentee fails to
disclose adequate corresponding structure, the claim is indefinite."
Williamson v. Citrix Online, LLC, 792 F. 3d 1339, 1352 (Fed. Cir. 2015)
(citations omitted).
Structure disclosed in the specification qualifies as
"corresponding structure" if the intrinsic evidence clearly links
or associates that structure to the function recited in the claim . .
. . Even if the specification discloses corresponding structure,
1 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.4l(b)(2).
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Application 11/270, 165
the disclosure must be of "adequate" corresponding structure to
achieve the claimed function .... Under 35 U.S.C. § 112, paras.
2 and 6, therefore, if a person of ordinary skill in the art would
be unable to recognize the structure in the specification and
associate it with the corresponding function in the claim, a
means-plus-function clause is indefinite.
Williamson, 792 F. 3d at 1352 (citations omitted) (emphasis added).
First, in response to the Examiner's findings, Appellants do not cite
any Specification portion that clearly links or associates a structure to each
of the following functions recited in these claim limitations: (1) means for
associating at least one package with a billing and customer service (BCS)
provider; (2) means for providing a subscription to a second device for the at
least one package associated with the BCS provider based on the set of
channels associated with the at least one package; (3) means for transmitting
a packager message to the second device; and ( 4) means for transmitting a
service definition message to the second device .... 2 To the contrary,
Appellants assert:
[O]ne of ordinary skill in the art would be able to identify, from
the cited portions of the specification, corresponding structures,
materials or acts with respect to the distribution sever 200 that
can perform each recited function. In particular, for each of
these recited functions, the specification discloses performance
by a computing device (i.e., a distribution server) through
operations that may be implemented in software running on
such device.
2 The Examiner cites other means plus function claim limitations, which are
not recited in claim 11 (Ans. 4). Further, the Examiner identifies means for
transmitting (Ans. 4), but claim 11 recites two means for transmitting claim
limitations. Because Appellants have presented arguments regarding both
means for transmitting claim limitations, we include both claim limitations
in our analysis.
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Appeal2015-002337
Application 11/270, 165
App. Br. 23.
Appellants' assertion that the distribution sever 200 can
perform each recited function, or operations may be implemented in
software on the distribution server 200, is insufficient for showing the
intrinsic evidence clearly links or associates that structure to the
fu . . d. h l . S p··ff" "92 .. f, ., ·1 1 F;; B nct10n recite mt e c aim. ee /lrnzamson, 1. . ~..,c at ~,~ .1..; .
Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed.Cir.1997)
(holding "structure disclosed in the specification is 'corresponding'
structure only if the specification or prosecution history clearly links
or associates that structure to the function recited in the claim")
(emphases added).
Second, Appellants cites excerpts from the Specification and assert:
[T]he cited portions of the specification describe a
special purpose machine programmable by software that is a
definite structure for performing the recited function of
associating at least one package with a billing and customer
service (BCS) provider.
[T]he cited portions of the specification describe a
special purpose machine programmable by software that is a
definite structure for performing the recited function of
providing a subscription to a second device for the at least one
package associated with the BCS provider based on the set of
channels associated with the at least one package.
[T]he cited portions of the specification describe a
special purpose machine programmable by software that is a
definite structure for performing the recited function of
transmitting a packager message to the second device.
[T]he cited portions of the specification describe a
special purpose machine programmable by software that is a
definite structure for performing the recited function of
transmitting a service definition message to the second device.
App. Br. 24-27.
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Appeal2015-002337
Application 11/270, 165
For example, Appellants cite the following Specification
portions for the claimed means for associating at least one package
with a billing and customer service:
See specification, p. 10 i-f [0045] ... ("BCS providers provide
subscription parameters that are received by the processing
logic 202 and stored in the subscription parameter storage 214 .
. . . [C]ontent packagers provide package parameters that are
receive[ d] by the processing logic 202 and stored in the package
parameter storage 216"); see also id. at 10 i-f [0046] ... ("the SI
logic 204 retrieves subscription parameters from the storage
214 that are associated with one or more BCS providers. The
SI logic also operates to retrieve[] package parameters from the
storage 216 and programming parameters from the storage 218
that are associated with each BCS provider. Thus, the SI
generation logic 204 operates to generate SI parameters 224
that are associated with each BCS provider.").) Combined with
the specific processor implementations (id. at 42 i-f [0218] ...
(e.g., DSP, ASIC, FPGA, etc.)), and storage media
implementations (id. at 12 i-f [0050], ... (e.g., floppy disk,
CDROM, memory card, FLASH memory device, RAM, ROM,
,,.ff' \ \ vvv.;; ....
App. Br. 23-24; see also App. Br. 25-27 (citing Specification
excerpts for means for providing ... and means for transmitting .... ).
However; Appellants have not persuasively shown how the
cited Specification excerpts clearly link or associate the structure to
each of the disputed functions recited in the claim. See TVi!liamson,
792 F. 3d at 1352; B. Braun Med., 124 F.3d at 1424.
Because Appellants have not shown the intrinsic evidence
clearly links or associates the structure to each of the disputed
functions discussed above, we affirm the Examiner's decision
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Application 11/270, 165
rejecting claims 11, 36-39, 41--44, 65, and 66 under 35 U.S.C. § 112,
second paragraph.
We further note the following: Appellants assert the Examiner
erred in construing the corresponding structures to be pure software.
See App. Br. 27. We understand the Examiner's findings to mean that
when the corresponding structure is software, Appellants have not
shown the Specification discloses the required algorithm for
performing each of the claimed function. Appellants assert the
Specification recites "a special purpose machine programmable by
software that is a ... structure for" each of the recited functions. App.
Br. 24--26. To the extent Appellants argue a special purpose machine
programmable by software-without disclosing algorithm for
performing the claimed functions---constitutes an adequate
corresponding structure (App. Br. 24), Appellants are mistaken. See
Williamson, 792 F. 3d at 1352 ("In cases ... involving a claim
limitation that is subject to § 112, para. 6 that must be implemented in
a special purpose computer ... [w] e require that the specification
disclose an algorithm for performing the claimed function") (citations
omitted) (emphasis added). Indeed, Appellants have not pointed to
any algorithm to demonstrate the sufficiency of the corresponding
structures.
Obviousness
On this record, we find the Examiner did not err in rejecting claim 1.
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
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Application 11/270, 165
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below. 3
Issue 1
Appellants contend Vermola, LaJoie and Ellis do not collectively
teach "associating, with the server, at least one auxiliary service and a
plurality of channels with the at least one package ... wherein at least one
channel is associated with the at least one auxiliary service such that the
view of the at least one base service is customized by the at least one
auxiliary service to include enhancements or supplementary information to
the at least one base service independent of a channel guide," as recited in
claim 1 (emphases added). See App. Br. 29-31; Reply Br. 2-5. In
particular, Appellants assert with respect to Ellis:
[E]ven assuming ... the related advertisements teach or suggest
auxiliary services, Ellis discloses that such advertisements are
linked to base ser\rices (i.e., movies) via the program guide. In
contrast, the recited claim language expressly recites that
auxiliary services include enhancements or supplementary
information that are independent of a channel guide (i.e., the
media presentation guide, which as presents channels to the
user).
Reply Br. 4.
Appellants' arguments are unpersuasive because they are not directed
to the Examiner's specific findings. The Examiner finds in Ellis, "the
advertisement is independent of the channel guide 102 as claimed in the
3 As pointed out by Appellants (Reply Br. 3, 5), the Examiner's Answer
provides further mappings for the disputed claim limitations. As a result,
Appellants' arguments from the Appeal Brief are superseded in light of such
further mappings.
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Application 11/270, 165
argued limitation above (showing in the figures of 2-16)." Ans. 23.
Appellants do not respond to such findings and therefore, fail to show error
in the Examiner's findings. See In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991) ("It is not the function of this court [or this Board] to
examine the claims in greater detail than argued by an appellant, looking for
[patentable] distinctions over the prior art.").
Further, Appellants assert in Ellis, "the 'main menu' screen of the
interactive program guide is not a 'base service,' since it merely provides
options for selecting viewing content." Reply Br. 4.
Appellants' assertion is unpersuasive because the Examiner
alternatively maps the claimed base service to Ellis' movies,
movies on demand, hot movies, new releases, or specials (Ans. 23), and
Appellants do not assert-let alone show-such mapping is incorrect. See
Baxter Travenol Labs., 952 F.2d at 391. In any event, Appellants have not
persuasively explained why "provid[ing] options for selecting viewing
content" (Reply Br. 4) cannot constitute the claimed base service.
Issue 2
Appellants contend Vermola, LaJoie and Ellis do not collectively
teach "transmitting, with the server to the device, a service definition
message comprising a second record indicating a validity time at which the
association between the at least one auxiliary service and the at least one
channel becomes valid such that the at least one base service is customized
by the at least one auxiliary service at the validity time," as recited in claim 1
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Appeal2015-002337
Application 11/270, 165
(emphases added). See App. Br. 32-35; Reply Br. 5-7.4 In particular,
Appellants contend:
Ellis still fails to teach or suggest that a movie or theme is
customized by an auxiliary service at a particular time received
in a service message. Rather, Ellis discloses that the
customization of the interactive program guide based on
advertisements/features disclosed is driven by user selection
(e.g., features in list filtered based on a selected theme, etc.).
Reply Br. 6-7. 5
Because the Examiner relies on the combination of Vermola, LaJoie
and Ellis to teach the disputed claim limitations, Appellants cannot establish
nonobviousness by attacking Ellis individually. See In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). In particular, we understand the Examiner
maps the claimed service definition message to LaJ oie' s automatic reminder,
and cites LaJoie for teaching "the validity time." See Ans. 24--25.
Therefore, the Examiner finds a service definition message ... indicating a
validity time (and "receiv[ing] ... the service definition message" of claim
9) is taught by or would have been obvious in light of LaJoie's teachings.
See Ans. 24--25. Appellants fail to persuade us of error because Appellants
do not critique the Examiner's specific findings. See Baxter Travenol Labs.,
952 F.2d at 391.
Because Appellants have not persuaded us of error, we sustain the
Examiner's rejection of claim 1, and independent claims 9-12 and 47 for
similar reasons.
4 In the Reply Brief, Appellants focus on claims 9 and 12. The Examiner's
response applies to claims that include claims 1, 9, and 12. See Ans. 24--25.
5 Appellants assert the Examiner's Answer misstates elements of claims 9
and 12 (Reply Br. 5). However, in the subsequent response, the Examiner
correctly states the elements (Ans. 24).
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Application 11/270, 165
We also sustain the Examiner's rejection of corresponding dependent
claims, as Appellants do not offer separate substantive arguments about
those claims. See App. Br. 35-36; Reply Br. 7.
DECISION
We affirm the Examiner's decision rejecting claims claims 1, 3-14,
16-19, 21-24, 26-30, 32-34, 36-39, 41--47, 49-52, and 54---66.
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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