Ex Parte Didomenico

Patent Trial and Appeal Board

Feb 22, 2016

13333840 (P.T.A.B. Feb. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/333,840 12/21/2011 Mauro Didomenico
22902 7590 02/22/2016
CLARK & BRODY
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.
12296-0002 2705
EXAMINER
1700 Diagonal Road, Suite 510 SALCE, JASON P
Alexandria, VA 22314
ART UNIT PAPER NUMBER
2421
MAILDATE DELIVERY MODE
02/22/2016 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 MAURO DIDOMENICO
Appeal2015-007526
Application 13/333,840
Technology Center 2400
Before ST. JOHN COURTENAY III, CARLAM. KRIVAK, and
MICHAEL J. STRAUSS, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 19--29. Claims 1-18 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b). An oral hearing was conducted on February 16,
2016.
We affirm.
Invention
The claimed invention on appeal "relates to telecommunications and
more particularly to delivering video on demand." (Spec. i-f 2.)
Appeal2015-007526
Application 13/333,840
Representative Claim
19. A method for providing video on demand at a portal hosted
at a web site and in communication with a plurality of video
servers via a packet data communication network, consisting of
the steps of:
establishing a communications session with a user via the
packet data communication network with a browser executing
on a computer operated by the user, the user having no initial
relationship to the portal;
receiving an Internet Protocol (IP) address of a video decoding
device of the user from the browser via the communications
session, a request from the user for a particular video selection
as part of said communications session, and payment from the
user for the requested particular video selection;
searching a plurality of video servers for the video selection via
the packet data communication network during said
communications session;
selecting one of the video servers that stores video content that
corresponds to the user video selection during said
communication session; and
communicating the received Internet Protocol (IP) address of
the video decoding device at the user's location to the selected
video server during said communication session;
causmg the selected video server to download the
corresponding video content to the video decoding device
during said communication session for viewing the video
content at a customer's premise, the communication session
starting with the establishing step and ending when the video
content is downloaded, [L 1] wherein the absence of any initial
relationship with the portal, paying for the video content at the
time of request, and using of the IP address as part of the
communications session allows the user to be independent of
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Application 13/333,840
the portal and permits obtaining a desired video selection
whenever the user decides.
(Emphasis added regarding the contested "wherein" clause limitation,
labeled as "L l ").
Rejections
A. Claims 19, 23, 25, and 29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings and suggestions of
Slezak (US Patent No. 6,006,257; Dec. 21, 1999), Wong et al. (US
Patent No. 6,968,364B1; Nov. 22, 2005), and Franco (US Patent
Application Publication 2002/0046407 Al; Apr. 18, 2002).
B. Claims 20-22 and 26-28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings and suggestions of
Slezak, Wong, Franco, and Garfinkle (US Patent No. 5,400,402;
Mar. 21, 1995).
C. Claim 24 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of
Slezak, Wong, Franco, and Lu (US Patent No. 7,231,411 Bl; June
12, 2007).
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Appeal2015-007526
Application 13/333,840
T'tlo • T"to 7 , 7 T'tl.T'tlo .J TT"'\. • • 1 rrzor Ket area 15Y Al ueczszons ,
1. Appeal 2011-000039, parent Application 09/840,868, BP AI Decision
mailed Oct. 21, 2011, Examiner Reversed, and a new ground of rejection
was entered pursuant to 37 C.F.R. § 41.50(b).
2. Appeal 2008-000662, parent Application 09/840,868; BPAI
Rehearing Decision mailed March 11, 2009; the request for rehearing was
denied.
3. Appeal 2008-000662, parent Application 09/840,868; BPAI Decision
mailed Nov. 26, 2008; Examiner Affirmed.
Grouping of Claims
Based on Appellant's arguments, we decide the appeal of all claims
rejected under rejection A on the basis of representative claim 19. See
37 C.F.R. § 41.37(c)(l)(iv). We address rejections Band C separately,
infra.
1 Appellant states in the Appeal Brief ( 4): "There are no prior or pending
appeals, interferences or judicial proceedings known to Appellant or
Appellant's legal representative that may be related to, directly affect, be
directly affected by, or have a bearing on the Patent Trial and Appeal Board
(hereinafter the "Board") decision in the pending appeal." When questioned
regarding this statement during the oral hearing conducted on Feb. 16, 2016,
Appellant indicated the omission was unintentional and resulted from a
"copy and paste" error in drafting the Appeal Brief. We note Appellant
acknowledges the "Previous Board Decisions" in the Reply Brief (12-13),
but does not specifically correct the record by listing the prior related BP AI
decisions we have included here.
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ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. We disagree with Appellant's arguments, and we adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Answer in response to Appellant's arguments. (Ans. 2-27). However,
we highlight and address specific findings and arguments for emphasis in
our analysis below.
Regarding representative independent claim 19, under rejection A,
Appellant principally contends, inter alia:
1. "The Examiner's assertion that Franco teaches the OTF concept of
the invention is in error." (App. Br. 14).
2. "The Examiner's interpretation of a user is inconsistent with the
teachings of Franco." (App. Br. 15).
3. "Neither Slezak o[r] Franco teach the OTF concept of the invention."
(App. Br. 18).
4. "Franco and Slezak are not properly combined." (App. Br. 20).
Regarding Appellant's first principal contention, we note the argued
"OTP concept" (i.e., "on-the-fly" approach) is not expressly claimed. 2 To
the extent such "OTP concept" may be characterized by the "wherein"
clause limitation L 1 of claim 19 (as argued during the oral hearing),
2 Regardless of the general contentions and imputed intended meanings
articulated by Appellant in the Briefs, "[i]t is the claims that measure the
invention." See SRI Int'! v. Matsushita Elec. Corp. of Am., 775 F.2d 1107,
1121 (Fed. Cir. 1985) (en bane) (citations omitted); In re Hiniker Co., 150
F.3d 1362, 1369 (Fed. Cir. 1998) ("[T]he name of the game is the claim.").
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Appellant notes that Franco describes a registration process and, thus, the
user in Franco has an initial relationship with the system, contrary to what is
claimed ("absence of any initial relationship with the portal" - claim 19).
(App. Br. 14). In support, Appellant (id.) points to Franco at paragraphs
82-83, and step 404 ("Identify the User"), as depicted in Franco's Figure
4A.
However, the Examiner disagrees (Ans. 9):
Step 404 of Figure 4A, which establishes a relationship to the
user, occurs after step 402, which registers the user with the
system of Franco. The Examiner notes if step 402 did not exist
in Paragraph 0082, and the user entered his/her credentials
( username and password), the system would not know who is
requesting to access the system of Franco. The Examiner notes
that before the any relationship is established by a user in
Franco, a communications session is established with a user
via the packet data communication network with a browser
executing on a computer operated by the user (see Paragraph
0082 for a registration process that allows a user that has no
initial relationship to the system; to register his/her viewing
device's IP address via a browser), therefore teaching that the
user has no initial relationship to the portal, as claimed.
We agree with the Examiner (id.) the recited "absence of any initial
relationship with the portal" (claim 19) broadly but reasonably encompasses
the absence of any user relationship prior to the "on-line registration
process" described in Franco (i-f 82). 3 We find no language in claim 19 that
precludes the Examiner's broader reading. (Ans. 9).
3 "During prosecution ... the PTO gives claims their 'broadest reasonable
interpretation."' In re Bigio, 381F.3d1320, 1324 (Fed. Cir. 2004) (quoting
In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000)). Because "applicants
may amend claims to narrow their scope, a broad construction during
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Regarding the additional recitation of limitation L l ("paying for the
video content at the time of request"), we observe Franco (§ 95) expressly
describes a "pay per view type system with video on demand like
capabilities." See Ans. 8-9. Further (regarding limitation L 1 ), the Examiner
finds (pertaining to the primary Slezak reference, col. 5): "by use of an IP
address to communicate between the user's web browser and set top
box, as well as video servers, web server and head end, the system
inherently allows a user to be independent of the portal by allowing the
user to communicat[e] between multiple devices over the Internet
network from any location and at any desired time." (Final Act. 5-6,
emphasis added).
To the extent Appellant's first principal contention is premised on
contention two (i.e., "[t]he Examiner's interpretation of a user is
inconsistent with the teachings of Franco" App. Br. 15), we note Appellant
admitted during the oral hearing there is no definition in the Specification
that would specifically preclude the Examiner's broader reading of the
"user" recited in claim 19. Therefore, on this record, we are not persuaded
the Examiner's claim interpretation is overly broad or unreasonable.
Regarding Appellant's third principal contention ("Neither Slezak o[r]
Franco teach the OTF concept of the invention" App. Br. 18), we again note
the argued "OTP concept" is not expressly claimed. See n.2, supra.
prosecution creates no unfairness to the applicant or patentee." In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation
omitted).
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Regarding Appellant's fourth principal contention that "Franco and
Slezak are not properly combined" (App. Br. 20), we find the Examiner
(Ans. 9--10) set forth sufficient "articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." In re Kahn,
441F.3d977, 988 (Fed. Cir. 2006). In particular, the Examiner (Ans. 9-10)
provides four specific reasons an artisan would have been motivated to use
Franco's registration process in the system of Slezak and Wong. See also 35
U.S.C. § 132.
Regarding Appellant's additional argument urging the Examiner has
improperly relied on impermissible hindsight (App. Br. 18), we note that
Appellant's principal contention in support ("There are, for example, no
citations of one patent to another in the chain." - id.), is not required to
establish a prima facie case of obviousness under§ 103. Nor has Appellant
provided objective evidence of secondary considerations which our
reviewing court guides "operates as a beneficial check on hindsight."
Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc., 725
F.3d 1341, 1352 (Fed. Cir. 2013). Moreover, Appellant has not persuaded
us the Examiner's proffered combination of cited references would have
been "uniquely challenging or difficult for one of ordinary skill in the art."
See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citing KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Thus, we find unavailing Appellant's contention the Examiner has relied on
impermissible hindsight reconstruction (App. Br. 18).
For the aforementioned reasons, we are not persuaded of error
regarding the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness for representative claim 19. Therefore, we
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sustain rejection A of representative independent claim 19. The remammg
grouped claims rejected under rejection A fall with claim 19. See "Grouping
of Claims" supra.
Remaining Claims 20-22, 24, and 26-28
Rejected under Rejections Band C
Appellant urges these claims are patentable by: ( 1) virtue of their
respective dependencies from independent claims 19 and 25, and (2),
because the additional cited secondary references "do not make up for the
failing in Slezak, Wong, and Franco to teach the invention of claims 19 and
25." (App. Br. 24).
However, we find no deficiencies regarding rejection A of
independent claims 19 and 25, for the reasons discussed above. Therefore,
we sustain the Examiner's rejections Band C of the remaining claims on
appeal for the same reasons discussed above regarding claims 19 and 25.
Reply Brief
To the extent Appellant may advance new arguments in the Reply
Brief (1-13) not in response to a shift in the Examiner's position in the
Answer, we note arguments raised in a Reply Brief that were not raised in
the Appeal Brief or are not responsive to arguments raised in the Examiner's
Answer will not be considered except for good cause. See 37 C.F.R.
§ 41.41(b)(2).
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DECISION
We affirm the Examiner's rejections of claims 19-29 under 35 U.S.C.
§ 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(f).
AFFIRMED
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