Ex Parte Deutmeyer et al

Patent Trial and Appeal Board

Feb 12, 2015

11052265 (P.T.A.B. Feb. 12, 2015)

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.
11/052,265 02/07/2005 Hans J. Deutmeyer 1073.004 4742
22186 7590 02/12/2015
MENDELSOHN, DRUCKER, & DUNLEAVY, P.C.
1500 JOHN F. KENNEDY BLVD., SUITE 312
PHILADELPHIA, PA 19102
EXAMINER
FLYNN, RANDY A
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
02/12/2015 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 HANS J. DEUTMEYER and CRAIG D. CUTTNER
____________

Appeal 2012–004882
Application 11/052,265
Technology Center 2400
____________

Before JEAN R. HOMERE, JEFFREY S. SMITH, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

WEINSCHENK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the Decision on Appeal mailed
September 5, 2014 (“Decision”), wherein we affirmed the Examiner’s
rejections of claims 1, 4–12, 14–19, 22, 23, 27–29, and 32, and reversed the
Examiner’s rejections of claims 24–26, 30, and 31 (see Decision 8). We
reconsidered the Decision in light of Appellants’ arguments in the request
for rehearing, but, for the reasons discussed below, we do not modify the
Decision.

ANALYSIS
We refer herein to Appellants’ Appeal Brief filed July 26, 2011
(“App. Br.”), the Examiner’s Answer mailed December 1, 2011 (“Ans.”),
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Application 11/052,265

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Appellants’ Reply Brief filed January 26, 2012 (“Reply Br.”), and
Appellants’ Request for Rehearing filed October 30, 2014 (“Reh’g Req.”).
Claims 1, 4–12, 14–19, 22, 23, and 27–29
Appellants argue we erred in our Decision because the Examiner’s
obviousness rejection provides alleged benefits of the Candelore, Peliotis,
and Ducheneaut references, but the Examiner does not state how the alleged
benefits relate to the claimed embodiment. Reh’g Req. 2–3. Appellants’
argument is not persuasive. “[T]he law does not require that the references
be combined for the reasons contemplated by the inventor.” In re Beattie,
974 F.2d 1309, 1312 (Fed. Cir. 1992).
Appellants also argue we erred in our Decision because the
Examiner’s obviousness rejection does not state how the alleged benefits of
the Candelore, Peliotis, and Ducheneaut references relate to the Bjorgan
reference. Reh’g Req. 2–3. Appellants’ argument is not persuasive. The
Examiner explains it would have been obvious:
to combine the prior art references of Bjorgan and Candelore by
using the content data packets and content descriptor data
already present in Bjorgan with the method disclosed in
Candelore, in order to create a commercially viable system that
would allow an end viewer of video content to tailor what they
watch and manipulate content.
Ans. 7 (emphasis added). The Examiner also explains it would have been
obvious “to combine the prior art of Bjorgan, Candelore, and Peliotis in
order to allow viewers to select video segments based on content.” Id. at 8
(emphasis added). The Examiner explains it would have been obvious “to
combine the prior art of Bjorgan, Candelore, Peliotis, and Ducheneaut by
allowing the update manager to be remotely located in order to reduce
manufacturing costs.” Id. at 8–9 (emphasis added). Thus, the Examiner
Appeal 2012–004882
Application 11/052,265

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explains the benefit of Candelore, Peliotis, and Ducheneaut with respect to
Bjorgan. Other than conclusory assertions of error, Appellants do not
identify any specific errors in the Examiner’s analysis. Reh’g Req. 2–3.
Appellants also argue that our reliance on In re Keller, 642 F.2d 413
(CCPA 1981), is misplaced. Reh’g Req. 3–4. In our Decision, we explained
that the Examiner does not need to show how to physically integrate the
individual systems of each reference into a single system. Decision 5 (citing
In re Keller, 642 F.2d at 425). Appellants do not challenge our conclusion
as being incorrect. Rather, Appellants argue that our reliance on In re Keller
is unnecessary because Appellants did not contend that the Examiner needs
to show how to physically integrate the systems of each reference. Reh’g
Req. 3–4. Appellants fail to explain how that constitutes an error requiring
reconsideration of our Decision. To the extent Appellants’ argument is that
the Examiner did not provide a sufficient rationale for combining the cited
references (id. at 4), we addressed that argument in our Decision (Decision
4–5) and address it again above.
Claim 32
Appellants repeat the argument from their Appeal Brief that the
Examiner did not address all the limitations of claim 32. Reh’g Req. 4; App.
Br. 5–6. In particular, Appellants argue that In re Jung, 637 F.3d 1356 (Fed.
Cir. 2011) is distinguishable because, in that case, the Examiner provided an
identification of where each limitation of the rejected claims was in the prior
art reference. Reh’g Req. 4. Appellants’ argument is not persuasive. As we
explained in our Decision, the Examiner’s rejection of claim 32 incorporates
the rejection of claim 1, which identifies where each limitation of claim 32 is
shown in the prior art. Decision 6–7.
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Application 11/052,265

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Appellants also argue that Peliotis does not teach the limitations of
claim 32. Reh’g Req. 4–5. Specifically, Appellants argue that, for the
limitation “store, prior to the playback time, the tag and corresponding
information for the first original SI in a tag archive” in claim 32, the
Examiner relies on the tag and marker storage 190 in the head end 182 in
Figure 9 of Peliotis. Id. at 4. Appellants contend that, for the limitation
“use, at the playback time, the tag to retrieve the corresponding information
for the first original SI from the tag archive” in claim 32, the Examiner relies
on the filter/comparator 30 in the customer hardware in Figure 2 of Peliotis.
Id. at 5. According to Appellants, “[a] filter/comparator at a customer
location is not equivalent to a storage device at a head end,” and, thus,
Peliotis does not teach the limitations of claim 32. Id.
Appellants did not present this argument in their Appeal Brief and
present it for the first time in this rehearing request. Appellants do not show
good cause as to why this argument was not presented in the Appeal Brief,
and, thus, it is waived. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative). Further, even if Appellants’ argument is not waived, it
is not persuasive. Appellants do not explain why the filter/comparator at the
customer location must be equivalent to the storage device at the head end in
order for Peliotis to teach the disputed limitations. Claim 32 recites that the
update manager is adapted to perform the disputed storing and using
limitations discussed above. Appellants do not argue that the update
manager must be one single component in one location, and Appellants do
not provide any reason why the filter/comparator and storage device in
Peliotis, when considered together, do not teach the disputed limitations.
Therefore, Appellants do not identify any error in the Examiner’s analysis.
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Application 11/052,265

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DECISION
We grant the request for rehearing to the extent that we reconsidered
the Decision in light of Appellants’ arguments in the request for rehearing,
but we deny the request for rehearing in that we do not modify the Decision.
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).

DENIED

msc