Ex Parte Dow et al

Patent Trial and Appeal Board

Mar 27, 2013

10396230 (P.T.A.B. Mar. 27, 2013)

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.
10/396,230 03/24/2003 Christopher Dow 03-517 6047
20306 7590 03/27/2013
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
LIN, JASON K
ART UNIT PAPER NUMBER
2425
MAIL DATE DELIVERY MODE
03/27/2013 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 CHRISTOPHER DOW and PHILIPPE PIGNON
____________________

Appeal 2010-007518
Application 10/396,230
Technology Center 2400
____________________

Before DAVID M. KOHUT, TREVOR M. JEFFERSON, and JOHN G.
NEW, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/396,230

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STATEMENT OF CASE1
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-25 and 37-39.2 Claims 26-36 and 40-42 have been cancelled. App.
Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Introduction
The claims are directed to system and method for generating and
updating instructions for navigation of digital video recorders. Spec.
¶[0001]. Claim 1, reproduced below with italics added, are illustrative of
the claimed subject matter:
1. A method for improving performance of a digital video
recorder, the method comprising:
transmitting an identifier to a remote server, the identifier
indicating a characteristic of broadcast content received by the
digital video recorder;
generating an instruction update, the instruction update
customized for a particular digital video recorder to improve a
commercial detection function of the particular digital video
recorder;
receiving from the remote server the instruction update,
the instruction update configured to alter the commercial
detection function of the particular digital video recorder; and
altering the commercial detection function of the
particular digital video recorder in response to receiving the
instruction update.

1 Throughout the Decision, we refer to the Appellants’ Appeal Brief (“App.
Br.,” filed Aug. 6, 2009), and Reply Brief (“Reply Br.,” filed Jam. 13, 2010),
and the Examiner’s Answer (“Ans.,” mailed Nov. 13, 2009).
2 The Real Party in Interest is THE DIRECTV GROUP, INC.
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References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Goldschmidt Iki US 6,226,444 B1 May 1, 2001
Agnihotri
Klosterman
Witt
US 2003/0126598 A1
US 2003/0167473 A1
US 2004/0045020 A1
Jul. 3, 2003
Sep. 4, 2003
Mar. 4, 2004

Rejections
The Examiner made the following rejections:
Claims 1, 2, 4, 5, 7-10, 17-20, 22, 23, and 25 stand rejected under 35
U.S.C §103(a) as being unpatentable over Klosterman and Witt. Ans. 3-14.
Claims 3, 6, 11-16, 21, and 24 stand rejected under 35 U.S.C §103(a)
as being unpatentable over Klosterman, Witt and Agnihotri. Ans. 15-19.
Claim 37-39 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Witt and Klosterman. Ans. 26-28.

ANALYSIS
Claims 1, 9 and 19 – 35 U.S.C §103(a)
Appellants contend that Examiner erred in rejecting claims 1, 9 and 19
because Klosterman fails to teach or suggest “instruction updates customized
for a particular digital video recorder (whether it be by location or device),
to improve the commercial detection function of the particular digital video
recorder” as recited in claims 1, 9 and 19. App. Br. 10. Appellants argue
that “particular digital recorder” as used in claims 1, 9 and 19 means an
“individual” digital video recorder (DVR). Reply 4-5 (citing Spec. ¶[0011]).
Appellants assert that Witt merely teaches aggregating statistics from the
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skipping or fast-forwarding of portions of a program as previously viewed
by other DVRs. App. Br. 10 (citing Witt ¶[0022]). Witt then teaches
forwarding this accumulated information regarding commercials for a
particular program to servers for data distribution. App. Br. 11 (citing Witt
¶[0030]). In sum, Appellants argue that “Witt’s identification of commercial
segments is not specific to the characteristics of a particular DVR, [but]
rather constitutes aggregated behavior of viewers of other DVRs.” App. Br.
11. Appellants assert, in contrast to Witt, that their “claimed method detects
commercials based on specific characteristics of a particular DVR, such as a
black frame, silent audio or a frame with a full screen logo (Specification,
para. 5).” App. Br. 11 (emphasis omitted).
The Examiner responds that Witt teaches or suggests a particular
digital video recorder by identifying DVRs by “particular location or
geographic location or device.” Ans. 31; see Witt ¶[0022]. Furthermore,
Witt distributes either in bulk or selectively commercial detection and
location information to different devices. Ans. 32. The Examiner found that
Witt distributes instructions, based on a particular location or a geographic
location, that are selectively sent to devices and are meant only for those
devices. Ans. 32-33. Thus, the combination of Klosterman and Witt yields
a particular DVR that falls “into a [local] region that would have commercial
detection information selectively distributed to them, and therefore the
instruction update is customized specifically for that location or geographic
location of the particular digital recorder and not for [other] regions.” Ans.
33.
Having reviewed Appellants’ arguments that the Examiner erred
(App. Br. 9-12), we agree with the Examiner (Ans. 31-35). We find that
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Witt discloses selectively distributing commercial detection information
based on region or locality to DVRs. See Ans. 32-33; Witt ¶¶[0030]-[0033].
Appellants’ argument that “Witt’s identification of commercial segments is
not specific to the characteristics of a particular DVR” is not commensurate
in scope with the claims. See App. Br. 10-11; Reply 4(citing Spec. ¶[0043];
dependent claims 3, 6, 11, 14, 21, 24). Appellants’ claims, as drafted, are
not limited to the characteristics, such as audio conditions, luminance
threshold or other video and audio factors found in Appellants’ Specification
and dependent claims. Ans. 33-34 (discussing App. Br. 11); see also Reply
4. Thus, Witt’s teaching and suggestions that include characteristics such as
program name, broadcast time, user playback, channel, and cable provider
latencies (Witt ¶[0033]), reads on Appellants’ claimed “identifier indicating
a characteristic of broadcast content” and commercial detection method. We
also note that Witt teaches the “use of video signal analysis together with
the” time based commercial detection. Witt ¶[0032].
Finally, we are not persuaded that the Examiner improperly construed
“customized” in the claim limitation “customized for a particular digital
video recorder.” Reply 5. Giving Appellants’ claim term the broadest
reasonable interpretation, we agree with the Examiner’s findings that Witt
specifies, based on a particular location or other geographic basis,
commercial detection information that is distributed selectively to DVRs.
Witt ¶¶[0030], [0033]; Ans. 32-33. Although we do not agree that the term
“customized” as used in the claim is overly broad (Ans. 32), we find that
customized may be defined at a general level for a group (or geographic
locality) and not only for a specific member of such a group. See Ans. 33.
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Appellants contend that Witt also teaches away from the claimed
invention because it “focuses on the alternative method of identifying
commercials based on other viewer’s habits,” Witt states that “‘the existing
content-analysis systems are inherently fallible’” (Witt ¶[0022]), and
expressly eschews “content-based commercial detection mechanism[s]” as
“ever be[ing] robust enough to accurately detect all commercial content.”
App. Br. 12 (quoting Witt ¶[0021]). Appellants argue that their claimed
method uses the content-based commercial detection customized for
particular DVRs that Witt rejects. App. Br. 12.
We do not agree that Witt’s description of the alternative methods of
commercial detection teaches away from Appellants claimed invention. “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” Ricoh Co., Ltd. v. Quanta Computer, Inc., 550
F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted). A reference does not
teach away if it merely expresses a general preference for an alternative
invention from amongst options available to the ordinarily skilled artisan,
and the reference does not discredit or discourage investigation into the
invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). “A
known or obvious composition does not become patentable simply because
it has been described as somewhat inferior to some other product for the
same use.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). As the
Examiner noted (Ans. 35), Witt expressly states that “an[] embodiment of
the present invention may include the use of video signal analysis together
with the general identification of the start and/or end of a commercial. With
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the general identification of the start and/or end of a commercial the system
may then look for characteristics . . . . [such as] a black frame or a
significant histogram difference between frames.” Witt ¶[0032]. Although
Witt distinguishes “content-analysis systems as fallible” (Witt ¶[0022]), we
find that Witt’s express inclusion of such methods in an embodiment does
not discourage or disparage content-based characteristics sufficiently to
teach away from their use.
Accordingly, the Examiner did not err in finding that Klosterman and
Witt teach or suggest “instruction updates customized for a particular digital
video recorder (whether it be by location or device), to improve the
commercial detection function of the particular digital video recorder” as
recited in claims 1, 9 and 19. App. Br. 10. We sustain the Examiner’s
rejection of claims 1, 9 and 19 under 35 U.S.C §103(a). Appellants argue
claims 2, 4, 5, 7, 8, 10, 17, 18, 20, 22, 23 and 25 with claims 1, 9 and 19
(App. Br. 12-13), and these dependent claims fall with their respective
independent claims.

Dependent Claims 3, 6, 11-16, 21 and 24 – 35 U.S.C §103(a)
Appellants make no separate argument for dependent claims 3, 6, 11-
16, 21 and 24 that depend from independent claims 1, 9, and 19. App. Br.
13. Thus, we also sustain the Examiner’s rejection of claims 3, 6, 11-16, 21
and 24 under 35 U.S.C §103(a).

Claims 37-39 – 35 U.S.C §103(a)
Appellants’ arguments for claims 37-39, substantially repeat and rely
on the same arguments presented for claims 1, 9 and 19. Based on the
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foregoing discussion of claims 1, 9 and 19, we sustain the Examiner’s
rejection of claims 37-39 under 35 U.S.C §103(a).

DECISION
For the above reasons, the Examiner’s rejection of claims 1-25 and
37-39 is affirmed.

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) (2011).

AFFIRMED

msc