Ex Parte Daniels

Board of Patent Appeals and Interferences

Mar 15, 2011

09993780 (B.P.A.I. Mar. 15, 2011)

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.
09/993,780 11/16/2001 John J. Daniels 14531.71.4.3 1576
47973 7590 03/16/2011
WORKMAN NYDEGGER/MICROSOFT
1000 EAGLE GATE TOWER
60 EAST SOUTH TEMPLE
SALT LAKE CITY, UT 84111
EXAMINER
LEE, Y YOUNG
ART UNIT PAPER NUMBER
2486
MAIL DATE DELIVERY MODE
03/16/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN J. DANIELS
____________

Appeal 2009-008822
Application 09/993,780
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and
CARLA M. KRIVAK, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008822
Application 09/993,780

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 3-7, 15, 37, 39, 40, 44-47, 64-76, and 78-80, which are all of the
pending claims. Claims 1, 2, 8-14, 16-36, 38, 41-43, 48-63, and 77 have
been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed September 29, 2008), the Answer (mailed
November 25, 2008), and the Reply Brief (filed January 23, 2009) for the
respective details.

Appellant’s Invention
Appellant’s invention relates to a method for remotely controlling a
video recorder. In response to selection of a television program from a
programming schedule, recording instructions are provided to a recording
device from a server. (See generally Spec. ¶¶ [0130]-[0131]).
Claim 37 is illustrative of the invention and reads as follows:
37. In a network server that communicates over a network with a
recording apparatus that is configured to record television programs, a
method for enabling the server to control the recording of one or more
selected television programs by the recording apparatus, the method
comprising the acts of:
storing a programming schedule at a server;
storing recording control information at the server, the
recording control information including at least one record command
that is transmittable over a network to a recording apparatus that is
configured to record television programming;
the server receiving a user request, which is transmitted to the
server through the Internet, for a webpage containing the
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programming schedule and that identifies one or more television
programs;
in response to the user request, the server providing a user
Internet access to the programming schedule in the form of a
navigable webpage and from which a particular television program
can be selected by the user for recording;
receiving, at the server, a user selection of the particular
television program to be recorded, the selection of the particular
television program to be recorded being made from the navigable
webpage provided to the user through the Internet; and
in response to the particular television program being selected
for recording, the server transmitting recording control information to
the recording apparatus over the network, the recording control
information comprising recording instructions that are configured to
cause the recording apparatus to record the particular television
program and such that the recording apparatus will thereafter be set up
to record the particular television program, and wherein the recording
instructions are transmitted to the recording apparatus from the server
through at least one of a television signal and the Internet.

The Examiner’s Rejections
The Examiner’s Answer cites the following prior art references:
Klosterman US 5,550,576 Aug. 27, 1996
Schein US 6,388,714 B1 May 14, 2002
(filed Apr. 11, 1997)
Claims 3-7, 15, 37, 39, 40, 44-47, 64-76, and 78-80, all of the
appealed claims, stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schein in view of Klosterman.

ANALYSIS
Appellant’s arguments with respect to the obviousness rejection of
independent claims 37 and 44, based on the combination of Schein and
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Klosterman, focus on the alleged deficiency of either reference, taken alone
or in combination, of teaching or suggesting the claimed invention.
According to Appellant (App. Br. 12-24; Reply Br. 3-6), neither of the
applied Schein or Klosterman references discloses both a first request from a
recording device to a server for a programming schedule, and a second
request from the recording device to the server for recording instructions in
response to a selection from the programming schedule. In Appellant’s
view, the applied Schein and Klosterman references disclose, at most, only a
single request from a recording device to a server for a programming
schedule.
We agree with Appellant. Schein discloses that a request over an
Internet connection is made by a user 20 for a television programming
schedule which is then loaded into the hard drive of computer 12 (Fig. 1;
col. 5, ll. 45-48; col. 9, ll. 7-46). The user can then select different programs
from the programming schedule for automatic recording using the VCRs 34
and 36 and recording parameters such as program date and start and end
times stored in memory 76 (Figs. 1-3; col. 6, ll. 29-47; col. 7, ll. 49-53; col.
8, ll. 24-27).
As argued by Appellant (App. Br. 13-14; Reply Br. 3-4), however, it
is apparent that Schein uses information that is already included in the
programming schedule for recording a selected program since there is no
teaching or suggestion of any request made to a server for recording
instructions as claimed. Similarly, with respect to the Figure 14A
embodiment of Schein additionally relied upon by the Examiner, we agree
with Appellant that, while a user can select “RECORD THIS PROGRAM”
from a programming schedule, there is no disclosure as to how the recording
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5
is implemented and, in particular, no disclosure of any request made to a
server or any subsequent receipt from the server of recording instructions.
We also agree with Appellant (App. Br. 19-23) that, while Klosterman
may disclose that a user can select a program to record from a programming
schedule, it is apparent that Klosterman uses information already included in
the programming schedule to implement the recording operation (Fig. 2; col.
8, l. 52–col. 9, l. 9). Accordingly, as with Schein, Klosterman has no
teaching or suggestion of any request made to a server for recording
instructions, nor any receipt of such recording instructions from the server as
claimed.
We recognize that the Examiner, in the Response to Argument section
at pages 7 and 8 of the Answer, expands upon the stated line of reasoning by
suggesting that, in Schein and Klosterman, a user’s initial access login to a
web server corresponds to the claimed “first request.” Further, the Examiner
finds the user selection of a program to record from the program schedule
database corresponds to the claimed “second request.”
We agree with Appellant (Reply Br. 4-5), however, that, to whatever
extent a selection of a program to be recorded may be considered a
“request,” there is no teaching or suggestion in either Schein or Klosterman
that such a request is made to a server. Rather, in Schein and Klosterman,
the recording “request” is made to the local recording system using
information included in the programming schedule and recording parameters
stored in local storage. We further agree with Appellant (Reply Br. 5) that
the Examiner has never explained why it would have been obvious to initiate
a recording operation by requesting recording information from a server
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when the local recording systems in both Schein and Klosterman have
already received recording information in the programming schedule.
For the above reasons, we do not sustain the Examiner’s 35 U.S.C.
§ 103(a) rejection of independent claims 37 and 44, nor of claims 3-7, 15,
39, 40, 45-47, 64-76, and 78-80 dependent thereon.

CONCLUSION OF LAW
Based on the analysis above, we conclude that the Examiner erred in
rejecting claims 3-7, 15, 37, 39, 40, 44-47, 64-76, and 78-80 for obviousness
under 35 U.S.C. § 103(a).

DECISION
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 3-7, 15, 37, 39,
40, 44-47, 64-76, and 78-80, all of the appealed claims, is reversed.

REVERSED

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WORKMAN NYDEGGER/MICROSOFT
1000 EAGLE GATE TOWER
60 EAST SOUTH TEMPLE
SALT LAKE CITY, UT 84111